The Board of Trustees of the Leland Stanford Junior University

Patent Trials and Appeals Board

Mar 23, 2022

2022000392 (P.T.A.B. Mar. 23, 2022)

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. 15/776,622 05/16/2018 Yue Wang 102354-0447 5095 166609 7590 03/23/2022 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER DIAZ, MATTHEW R ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUE WANG and ZHENAN BAO Appeal 2022-000392 Application 15/776,622 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 14, 15, 17-19, and 23-26. See Final Office Action (“Final Act.”) dated September 30, 2020, 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Board of Trustees of the Leland Stanford Junior University as the real party in interest. Appeal Brief (“Appeal Br.”) filed June 2, 2021, 2. Appeal 2022-000392 Application 15/776,622 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to an electronic device having a stretchable conductor including a polymer composition, wherein the polymer composition comprises a conductive polymer and at least one stretchability and electrical conductivity (“STEC”) enhancer, the content of the STEC enhancer in the polymer composition being at least about 1 wt.% of the composition. Specification (“Spec.”) filed May 16, 2018, ¶ 20. Claim 14, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 14. An electronic device comprising: a stretchable conductor including a polymer composition which includes a conductive polymer; and at least one stretchability and electrical conductivity (STEC) enhancer different from the conductive polymer, wherein the STEC enhancer is a compound including an anion, and a content of the STEC enhancer in the polymer composition is at least 1 wt.% of the polymer composition, wherein the polymer composition does not include sulfonylimide anions. Appeal 2022-000392 Application 15/776,622 3 REFERENCES The Examiner and Appellant rely on the following prior art to reject the claims or rebut a claim rejection: Name Reference Date Ohno US 8,697,309 B2 Apr. 15, 2014 Sotzing et al. (“Sotzing”) US 2012/0224247 A1 Sept. 6, 2012 Yujie Ding, et al., Conductivity Trends of PEDOT-PSS Impregnated Fabric and the Effect of Conductivity on Electrochromic Textile, 2 ACS APPL. MATER. & INTERFACES 1588, 1589-93 (2010) (“Ding”). REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections under 35 U.S.C. § 103: 1. Claims 14, 15, 17-19, and 23-25 as unpatentable over Sotzing; and 2. Claim 26 as unpatentable over Sotzing in view of Ohno. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After considering Appellant’s arguments and the evidence of record, we are persuaded of reversible error in the stated rejections for the reasons set forth in the Appeal and Reply Briefs. For reasons that will become apparent below, we limit our discussion below to independent claim 14 and Sotzing, which is sufficient to dispose of Appeal 2022-000392 Application 15/776,622 4 all the rejections raised against the pending claims.2 In particular, the issues before us are whether the Examiner erred in interpreting “polymer composition” as used in claim 14 and whether the Examiner erred in interpreting Sotzing’s description of impregnation. Because we answer both questions in the affirmative, we do not sustain the Examiner’s obviousness rejections over Sotzing, alone or further in view of Ohno. The Examiner finds in relevant part that Sotzing discloses an electronic device substantially as recited in claim 14, wherein Sotzing’s stretchable electrochromic substrate (stretchable conductor) comprises a conductive polymer and a stretchable transparent polymeric electrolyte (STEC enhancer or ionic liquid) impregnated into the substrate. Ans. 3. Because the Examiner finds that the electrolyte impregnates the substrate, the Examiner determines that Sotzing reads on a polymer composition comprising a conductive polymer and at least one STEC enhancer. Id. at 3, 7-8. In this regard, the Examiner finds that Sotzing teaches both coating and impregnating as alternative embodiments for applying the electrolyte to the electrochromic substrate. Id. at 8. The Examiner also finds that Sotzing teaches the electrochromic substrate may be completely surrounded by an electrolyte layer or that the substrate may be embedded in the electrolyte. Id. at 9. In this regard, the Examiner notes that “mixing of components is not required to meet the claimed invention.” Id. In contrast, Appellant argues that claim 14 recites a “polymer composition,” which requires that the conductive polymer and the at least one STEC be intermixed together to create this composition. Reply Br. 2-3. 2 Appellant does not argue Ohno separately, nor does the Examiner rely on Ohno to remedy any deficiency in Sotzing with respect to claim 14. Appeal 2022-000392 Application 15/776,622 5 Appellant contends that Sotzing not only fails to teach mixing of a conductive polymer and at least one STEC enhancer, Sotzing’s impregnation merely coats the substrate comprising the conductive polymer with the electrolyte or STEC enhancer. Appeal Br. 11-12. In other words, Appellant contends that Sotzing fails to disclose or suggest a polymer composition comprising a conductive polymer and at least one STEC enhancer. Id. Appellant’s arguments are persuasive of reversible error. Claim 14 requires a “polymer composition which includes a conductive polymer; and at least one stretchability and electrical conductivity (STEC) enhancer.” We recognize that Appellant’s use of a semi-colon following the recitation of the conductive polymer would seem to suggest that what follows is a component of the electronic device (“electronic device comprising:”), rather than a component of the polymer composition. However, the claim further recites “a content of the STEC enhancer in the polymer composition,” which suggests that the enhancer is a component of the polymer composition.3 Given the ambiguity created by these competing possibilities for this claim, it is appropriate to turn to the Specification for clarification. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003); Union Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed. Cir. 2001); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). 3 Although not reflected in the version of claim 14 in the Claims Appendix to the Appeal Brief, each version of claim 14 submitted during prosecution in the application presents the STEC enhancer with paragraphing also suggesting that the enhancer is a component of the polymer composition, notwithstanding the semicolon. See Responsive Amendments filed January 29, 2020, July 22, 2020, and December 29, 2020. Appeal 2022-000392 Application 15/776,622 6 As Appellant asserts, the Specification’s description of the claimed invention is limited to a polymer composition including a conductive polymer and at least one STEC enhancer, and does not teach or suggest that the enhancer is a separate component of the device in addition to the stretchable conductor. See, e.g., Spec. ¶ 7 (“a polymer composition includes a conductive polymer and at least one stretchability and electrical conductivity (STEC) enhancer”), ¶ 20 (“a polymer composition, which includes a conductive polymer and at least one STEC enhancer”), ¶ 72 (“A synergistic effect on both conductivity and stretchability can be achieved when the STEC enhancers satisfy the following two characteristics: (1) good solubility in water and the PEDOT:PSS matrix, and (2) highly acidic anions that can act as effective dopants for PEDOT.”). In addition, Figure 1 discloses two embodiments, one without and one with a STEC enhancer incorporated (or mixed) within a conductive polymer matrix. See Figs. 1c and 1d, respectively. In our view, an ordinary artisan would have readily understood that claim 14 is directed to an electronic device having a stretchable conductor including a polymer composition, wherein the polymer composition comprises a conductive polymer and at least one STEC enhancer. In other words, an ordinary artisan would have recognized that the semicolon after “a conductive polymer” is a typographical error. We next turn to the meaning of a polymer composition to determine whether the record supports the Examiner’s finding that Sotzing’s disclosure of impregnating the electrochromic substrate with a STEC enhancer corresponds to a polymer composition including a conductive polymer and a Appeal 2022-000392 Application 15/776,622 7 STEC enhancer.4 There is no dispute that Sotzing teaches that the electrochromic substrate is coated or impregnated with a STEC enhancer. Sotzing Abstract, ¶¶ 8, 13, 55, 57, 66, 89, 107, 124. However, although Sotzing clearly distinguishes between coating and impregnating, this distinction is limited to fabric substrates in which the enhancer can be merely coated or impregnated (absorbed into the fabric substrate). Id. at ¶¶ 107, 124. In such cases where the enhancer impregnates the substrate, although potentially completely covering all surfaces of the substrate, the enhancer nonetheless forms a structurally distinct layer over and around the substrate. An ordinary artisan would reasonably describe Sotzing’s impregnated substrate as a stretchable conductor including a conductive polymer and a STEC enhancer, but not as a stretchable conductor including a polymer composition which includes the conductive polymer and the STEC enhancer. In other words, contrary to the Examiner’s finding, Sotzing’s enhancer is a component of the stretchable conductor itself, but is not a component of the polymer composition including the conductive polymer. Accordingly, we find that the Examiner erred in finding that Sotzing teaches or suggests an electronic device as recited in claim 14, including a polymer composition comprising a conductive polymer and at least one STEC enhancer. The Examiner’s obviousness rejections rely on this erroneous finding, and as such, do not have sufficient factual underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on 4 The Examiner does not appear to find that mere coating of the enhancer on the substrate corresponds to a polymer composition including the conductive polymer and the enhancer. Appeal 2022-000392 Application 15/776,622 8 obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims 14, 15, 17-19, and 23-26 under 35 U.S.C. § 103 as unpatentable over Sotzing, alone or further in view of Ohno, is reversed. DECISION SUMMARY The following table summarizes the outcome of each rejection: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 15, 17- 19, 23-25 103 Sotzing 14, 15, 17- 19, 23-25 26 103 Sotzing, Ohno 26 Overall Outcome 14, 15, 17- 19, 23-26 REVERSED