Dirk Bollen et al.

Patent Trials and Appeals Board

Sep 27, 2019

14895067 - (D) (P.T.A.B. Sep. 27, 2019)

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.
14/895,067 12/01/2015 Dirk BOLLEN 55505.395 1082
60405 7590 09/27/2019
AGFA
c/o KEATING & BENNETT, LLP
1800 Alexander Bell Drive
SUITE 200
Reston, VA 20191
EXAMINER
GATES, BRADFORD M
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
JKEATING@KBIPLAW.COM
sfunk@kbiplaw.com
uspto@kbiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIRK BOLLEN, NICOLAS VRIAMONT, and
JOHAN LOCCUFIER

Appeal 2018-004128
Application 14/895,067
Technology Center 1700
____________

Before DONNA M. PRAISS, JAMES A. WORTH, and
SHELDON M. MCGEE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 16–32. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 In this Decision we refer to the Specification filed Dec. 1, 2015 (“Spec.”),
the Final Office Action dated Jan. 30, 2017 (“Final Act.”), the Appeal Brief
filed Aug. 28, 2017 (“Appeal Br.”), the Examiner’s Answer dated Jan. 9,
2018 (“Ans.”), and the Reply Brief filed Mar. 8, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Agfa-Gevaert.
Appeal Br. 2.
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STATEMENT OF THE CASE
The invention relates to metallic nanoparticle dispersions, methods of
preparing such dispersions, and printing and coating fluids made from these
dispersions. Spec. 1:7–9. According to the Specification, metallic
nanoparticle dispersions have unique properties that make them of interest
for printed electronics, electrochemical, optical, magnetic, and biological
applications. Id. at 1:17–23.
Independent claim 16, reproduced below from the Claims Appendix
to the Appeal Brief, is illustrative of the subject matter on appeal (emphasis
added).
16. A metallic nanoparticle dispersion comprising:
metallic nanoparticles; and
an inorganic acid or a compound that generates the
inorganic acid during curing of the metallic nanoparticle
dispersion; wherein
the inorganic acid or the compound that generates the
inorganic acid is present in an amount less than 50 μmol/g
metal.
ANALYSIS
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 the
argued claims in light of the case law presented in this Appeal and the
positions of both Appellant and the Examiner, we are persuaded of
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reversible error in the Examiner’s rejections. Each rejection is addressed
below.

Rejection 1: Obviousness of Claims 16–19, 21–24, and 28–32
The Examiner rejects claims 16–19, 21–24, and 28–32 under
35 U.S.C. § 103 over the combination of Harada3 and Qiu4 for the reasons
provided on pages 3–7 of the Final Action. The Examiner acknowledges that
Harada does not disclose an inorganic acid or a compound that generates the
inorganic acid during curing, wherein the inorganic acid or compound that
generates the inorganic acid is present in an amount of less than 50 µmol/g
metal as required by claim 1. Final Act. 3. The Examiner finds that Qiu
teaches adding HCl to a silver nanoparticle dispersion and controlling the
ratio of silver to HCl for controlling the particle size of the silver
nanoparticles. Id. at 4 (citing Qiu Abstract, ¶ 191). The Examiner determines
that it would have been obvious to modify Harada by adding HCl and to
optimize the ratio of silver to HCl because Qiu teaches that controlling the
ratio of silver to HCl allows for control of the particle size of the silver
nanoparticles. Id.
We are persuaded by Appellant’s argument (Appeal Br. 4–5) that the
Examiner reversibly erred in rejecting independent claim 1 because the
Examiner’s reason for combining Harada and Qiu does not have a rational
underpinning to support it. In particular, Appellant points out that Harada is
concerned with the electrical conductivity of its dispersions whereas Qiu, on

3 US 2009/0321689 A1, published Dec. 31, 2009.
4 US 2008/0181931 A1, published July 31, 2008.
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the other hand, is directed to adding silver nanoparticles to contact lenses to
provide antimicrobial properties. Id. at 4 (citing Qiu ¶ 9; Harada ¶ 17).
Appellant also contends that the combination of Qui and Harada would
result in a dispersion containing HCl in an amount far greater than claimed
and an amount that would not have been suitable for Harada’s intended
purpose. Id. at 5. Appellant directs us to the molar ratio of silver to HCl
taught by Qiu, which Appellant calculates would be at least 9,000 µmol/g
metal, as well as the Specification, which discloses that the conductivity of a
metallic nanoparticle dispersion decreases as the concentration of HCl
increases. Id. (citing Qiu ¶ 184; Spec. ¶¶ 119, 121).
In the Answer, the Examiner finds that “it is generally known in the
art that particle size and conductivity are correlated,” and controlling particle
size is important to Harada, and therefore a skilled artisan would have
consulted Qiu’s teaching that the ratio of HCl to metal particles affects
particle size. Ans. 12–13. The Examiner further finds that both Qiu and
Appellant’s claims are directed to metal nanoparticle dispersions. Id. at 13.
Regarding the amount of HCl used in Qiu’s dispersions exceeding the
claimed amount, the Examiner dismisses Appellant’s argument on the basis
that the teaching is from an example in Qiu. Id. at 13. The Examiner also
dismisses Appellant’s argument that conductivity is decreased with high HCl
concentration as not being supported by sufficient evidence and on the basis
that Qiu teaches optimizing the ratio of HCl to metal particles to control
particle size. Id. at 13–14.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). A
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determination of unpatentability on a ground of obviousness, however,
“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.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). If
the Examiner’s burden is met, the burden then shifts to Appellant to
overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992).
Although the Examiner has identified a reason to combine Qiu’s
teaching with Harada, that reason does not explain why a person having skill
in the art at the time of the invention would have sought to modify the
particle size in Harada’s nanoparticle dispersion. The Examiner’s
unsupported finding that particle size correlates to conductivity does not
adequately explain what that correlation is and how that finding would
influence any modification of Harada’s nanoparticle suspension. Similarly,
the Examiner’s finding that Qiu discloses a relationship between the ratio of
HCl to metal particles and particle size does not adequately explain how that
correlation would be applied to the teachings of Harada, i.e. whether the
particle size would decrease with increased HCl concentration, whether
decreased particle size is a desired modification from the prior art teachings,
and whether the amount of HCl added to Harada’s nanoparticle suspension
would meet the claim requirement of less than 50 µmol/g metal. Without a
clear benefit to Harada’s nanoparticle suspension, there is no reasonable
basis for modifying Harada’s suspension in the same manner as a
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nanoparticle particle suspension for contact lenses. Therefore, the
Examiner’s reason for the proposed combination of Harada with Qiu is not
sufficient to support the legal conclusion of obviousness over Harada and
Qiu.
Accordingly, we reverse the Examiner’s rejection of claims 16–19,
21–24, and 28–32 under 35 U.S.C. § 103 over the combination of Harada
and Qiu.

Rejection 2: Obviousness of Claim 20
The Examiner rejects claim 20 under 35 U.S.C. § 103 over the
combination of Harada and Qiu as applied to claim 16 and further in view of
Hinotsu5 for the reasons provided on pages 7–8 of the Final Action.
Because the Examiner’s reliance on Hinotsu does not cure the
deficiency of the combination of Harada and Qiu for the reasons discussed
above in connection with claim 16, we likewise reverse the Examiner’s
rejection of claim 20 under 35 U.S.C. § 103.

Rejections 3 and 4: Obviousness of Claims 25–27
The Examiner rejects claims 25 and 26 over the combination of
Tomonari6 with Qiu under 35 U.S.C. § 103 for the reasons provided on
pages 8–9 of the Final Action. The Examiner finds that Tomonari teaches a
method of making a metal particle solution where the solvent can be N-
methylacetamide, which reads on Formula I of claim 25, and an inorganic

5 US 2013/0153835 A1, published June 20, 2013.
6 US 2007/0098608 A1, published May 3, 2007.
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acid is added, however Tomonari does not teach the claimed amount of
inorganic acid required by claim 25. Final Act. 8–9 (citing Tomonari ¶¶ 16,
18, 20, 22, 25). The Examiner determines that it would have been obvious to
one of ordinary skill in the art to optimize the ratio of metal to inorganic acid
in the method taught by Tomonari to control the particle size of the metal
nanoparticles in view of Qiu. Id. at 9.
We are persuaded by Appellant’s arguments and evidence that the
Examiner’s combination of Tomonari with Qiu based on the same rationale
for combining the teachings of Harada and Qiu also is not sufficient to
support the legal conclusion of obviousness over Tomonari and Qiu. As
discussed above in connection with the rejection of claim 16, the Examiner’s
reason for modifying the prior art nanoparticle suspension with the teachings
of Qiu does not explain why a person having skill in the art at the time of the
invention would have sought to modify the particle size in the prior art
nanoparticle dispersion. The Examiner’s unsupported finding that particle
size correlates to conductivity does not adequately explain what that
correlation is and how that finding would influence any modification of
Harada’s nanoparticle suspension. Similarly, the Examiner’s finding that
Qiu discloses a relationship between the ratio of HCl to metal particles and
particle size does not adequately explain how that correlation would be
applied to the teachings of Tomonari, i.e. whether the particle size would
decrease with increased HCl concentration, whether decreased particle size
is a desired modification from the prior art teachings, and whether the
amount of HCl added to Tomonari’s nanoparticle suspension would meet the
claim requirement of less than 50 µmol/g metal. Without a clear benefit to
Tomonari’s nanoparticle suspension, there is no reasonable basis for
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modifying Tomonari’s suspension in the same manner as a nanoparticle
particle suspension for contact lenses.
Accordingly, we reverse the Examiner’s rejection of claims 25 and 26
under 35 U.S.C. § 103 over the combination of Tomonari and Qiu.
Claim 27 stands rejected over the combination of Tomonari and Qiu
further in view of Hinotsu for the reasons provided on page 10–11 of the
Final Action. Because the Examiner relies on the same combination of Qiu
with Tomonari to teach the claimed amount of inorganic acid present in an
amount of less than 50 mol/g metal (Final Act.10–11), we likewise reverse
the rejection of claim 27 for the same reasons discussed above in connection
with claims 25 and 26.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
16–19, 21–24,
28–32
§ 103 Harada and Qiu   16–19, 21–24,
28–32
20 § 103 Harada, Qiu, and Hinotsu 
20
25, 26 § 103 Tomonari and Qiu 25, 26
27 § 103 Tomonari, Hinotsu, and Qiu
27
Overall
Outcome
16–32

REVERSED