Ex Parte 7125605 et al

Patent Trials and Appeals Board

May 31, 2013

95001298 - (D) (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,298 02/26/2010 7125605 038-0005RX 8105
27890 7590 05/31/2013
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/31/2013 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

____________

NANOCO TECHNOLOGIES, LTD.
Requester and Cross-Appellant and Respondent
v.

MASSACHUSETTS INSTITUTE OF TECHNOLOGY
Patent Owner and Appellant and Cross-Respondent
____________

Appeal 2012-011692
Reexamination Control 95/001,298
Patent 7,125,605 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON,
and RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent Examiner’s
decision to reject pending claims in an inter partes reexamination of U.S. Patent
No. 7,125,605. This is also a decision on an appeal by the Third-Party Requester
from the Patent Examiner’s decision not to adopt proposed rejections of the claims.
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The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315.
We affirm.
I. BACKGROUND
The patent in dispute in this appeal is U.S. Patent No. 7,125,605 B2
(hereinafter, “the ‘605 Patent”), which issued October 24, 2006. The claims are to
coated nanocrystals, where each nanocrystal has a size-selected core including a
semiconductor material and an overcoating including a semiconductor material
deposited on the core. The nanocrystals emit light at a controlled peak wavelength
of light. The nanocrystals have applications in optoelectronics, e.g., in light
emitting devices and optical switches (Danek,1 p. 714).
A request for inter partes reexamination under 35 U.S.C. §§ 311-318
and 37 C.F.R. §§ 1.902-1.997 for the ‘605 patent was filed February 26, 2010 by a
Third-Party Requester (Corrected Request for Inter Partes Reexamination). The
Third-Party Requester is Nanoco Technologies (Requester Appeal Br. 1, dated
April 27, 2012). The Patent Owner is the Massachusetts Institute of Technology
(Patent Owner Appeal Br. 1, dated April 24, 2012. Claims 1-13, 16-19, 22-26, 33,
34, 37, 42-46, 48-70, and 73-75 are pending and stand rejected. Patent Owner does
not appeal the rejections of claims 42, 44, 73, and 74. (Patent Owner App. Br. 2).
An oral hearing was held January 25, 2013. A transcript of the hearing will be
entered into the record in due course
The instant Reexamination 95/001,298 (“the ‘298 Reexamination”) is related
to Reexamination 95/001,268 Reexamination of US 6,861,155. The ‘605 patent is

1 Danek, M., Jensen, K.G., Murray, C.B., and Bawendi, M.G. Preparation of II-VI
quantum dot composites by electrospray organometallic chemical vapor
deposition, 145 Journal of Crystal Growth 714-720 (1994).
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a continuation of the ‘155 patent (“Related U.S. Application data” listed in the
‘605 patent).
IA. Appeal by Patent Owner
Patent Owner appeals the Examiner’s decision to reject the claims as under
35 U.S.C. § 102 and § 103. The grounds of rejection are numbered 1-9 herein.

IB. Appeal by Requester
Requester appeals the Examiner’s decision not to maintain rejections under
35 U.S.C. § 102 and § 103 involving the Kuno2 and Danek publications (Requester
Appeal Br. 13-14).
IC. Claims 1 and 16
Claims 1 and 16 are representative and reads as follows (underlining and
brackets indicate amendments relative to original claims):
1. A population of coated nanocrystals each comprising a size-
selected core including a first semiconductor material and an
overcoating including a second semiconductor material, wherein the
population of coated nanocrystals exhibit photoluminescence having a
quantum yield of greater than about 30%.

16. A population of coated nanocrystals comprising a core including
a first semiconductor material and [an] a controlled overcoating of
ZnS, wherein the cores of the population of nanocrystals having no
greater than 10% rms deviation.

II. CLAIM INTERPRETATION
“Size-selected core”

2 Kuno, M., Lee, J., Dabbousi, B., Mikulec, F., and Bawendi, M. The band edge
luminescence of surface modified CdSe nanocrystallites: Probing the luminescing
state, 106(23) J. Chem. Phys. (1997).
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Independent claims 1, 26, 43, 45, and 58 are directed to coated nanocrystals
with a “size-selected core.” Relying on a declaration by Christopher B. Murray,
Patent Owner provides evidence that:
[P]erson of ordinary skill in the art in about 1996-1997 would have
understood the term “a size-selected core” to refer to a nanocrystal
having a core of a selected, i.e., a chosen or a desired size. In other
words, a size-selected core has a size chosen from a number of
different sizes. A person of ordinary skill in the art in about 1996-
1997 would have understood the term “a size-selected core” to refer to
structural properties of nanocrystals. Whether a nanocrystal includes
a size-selected core can be determined with reference to observable
structural properties of the nanocrystal. The structure of the size
selected core arises from how the nanocrystal was made.

9. Among the observable structural properties of a population of
coated nanocrystals having size-selected cores are an absorption
maximum at a desired wavelength (e.g., when core size is selected
prior to synthesis), photoluminescence at a desired wavelength (e.g.,
when core size is selected prior to synthesis), and photoluminescence
with a narrower FWHM (e.g., when a core population has been size-
selected by size-selective precipitation).
(Second Murray Decl. ¶¶ 8 & 9.)
Dr. Murray was a professor of Chemistry and Materials Science and
Engineering at the University of Pennsylvania at the time his declaration was
executed (Second Murray Declaration ¶ 2, dated May 20, 2011. Dr. Murray was a
student in the Department of Chemistry at the Massachusetts Institute of
Technology and graduated with a Ph. D. in physical chemistry in 1995 (id. at ¶ 3).
Moungi G. Bawendi was the faculty supervisor of his research (id.). Dr. Bawendi
is a co-inventor of the ‘155 Patent and MIT is the Patent Owner.
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The Examiner found that the term “size-selected” is not given a “special
definition” in the ‘605 patent (RAN 6). Rather, the Examiner interpreted the term
to encompass “any size nanocrystal core.” (Id.)
To resolve these differences, we first turn to the specification of the ‘605
patent. As found by the Examiner, the ‘605 patent does not expressly define the
term “size-selected core.” However, the patent does provide a description of size
selection. For example, the ‘605 patent describes producing the core of the
claimed nanocrystals by growing crystals under specific conditions, and then,
optionally, performing a step of “size selective precipitation” (‘605 patent, col. 4,
ll. 36-60). In this method, the patent first describes monitoring the size of the
nanocrystal core during the growth phase (id. at col. 5, ll. 37-44). Once the initial
cores are made, the patent discloses that the “particle size distribution maybe [sic]
further refined by size selective precipitation.” (Id. at col. 5, ll. 45-46.) A method
to accomplish “size-selective precipitation” is described in detail in the ‘605 patent
(id. at col. 9, ll. 50-59.) The patent also more generally refers to the core being
“selected from the range of about 20 Å to about 125 Å.” (Id. at col. 2, ll. 66-67.)
The ‘605 patent teaches that as the size of the core increases, the color of the
luminescence changes, e.g., from blue to red (id. at col. 8, ll. 4-6). The patent
describes selecting cores of “desired absorption characteristics” (id. at col. 9, ll. 41-
42) and hence of a specific size since size determines absorption properties (id. at
col. 3, ll. 61-64; col. 7, ll. 30-36; Fig. 1). Figure 1 shows that differently sized
cores have different absorption spectra (id.)
Clearly, “size-selected cores” is a reference to the teachings in the ‘605 of
selecting a core size in the initial growing step, without or without the additional
size-selective precipitation. The core is selected to obtain a desired absorption
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characteristic, e.g., as shown in Figure 1. Thus, we agree with Dr. Murray that size
selection confers a structural property on the cores to the extent that it means that
the “size-selected core” has a defined absorption spectra, e.g., as shown in Figure 1
of the ‘605 patent. However, we also agree with the Examiner that a “size-selected
core” would read on any sized core, as long as such core had a specific absorption
spectrum as shown in the ‘605 patent. The reason is that the patent specification
clearly indicates that size-selection can be used to pick any desirable sized core.
The ‘605 patent describes two size selection steps: 1) growing crystals until
a certain absorption spectrum is obtained, where the core size determines the
absorption spectrum; and 2) size-selective precipitation after initial crystal growth.
However, the claims are product claims, and not limited to a method of production.
Thus, we interpret a “a size-selected core” to mean a core which has been grown to
have a certain size and specific absorption spectrum, and is optionally precipitated.

“Color-selected core” (claim 53)
Color refers to the wavelength of light of the luminescence associated with a
particular sized core (‘605 patent, col. 8, ll. 4-6). A size-selected core therefore has
a corresponding size-selected color. As discussed above, the ‘605 patent describes
obtaining cores of different sizes which, as shown in Figure 1, have different
colors. Thus, as with a “size-selected core,” we interpret “color-selected core” to
mean that a core which has been grown to have a certain color and size, and is
optionally precipitated.

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“Controlled overcoating” (independent claim 16, 26, 45, 48)
Patent Owner provides evidence that a person of ordinary skill in the art in
about 1996-1997 would have understood the term “controlled overcoating” to
mean “a nanocrystal having an overcoating which has a desired thickness, a high
degree of completeness (i.e., how completely the overcoating surrounds the core or
leaves portions of the core exposed), a high degree of crystallinity, and a distinct
boundary between the core material and the overcoating material (i.e., a low degree
of alloying of overcoating materials and core materials)." (Second Murray Decl. ¶
20). We again begin with the ‘605 patent specification.
The term “controlled overcoating” is not expressly defined in the ‘605
patent. The patent explains that “the method of the invention allows both the size
distribution of the nanocrystallites and the thickness of the overcoating to be
independently controlled.” (‘605 patent, col. 7, 31-34.) The overcoating on the
core changes the optical and structural properties of the nanocrystal (id. at col. 8, ll.
13-47). Based on this disclosure, we interpret “controlled overcoating” to be an
overcoating that has been applied to the core to achieve specific optical and
structural properties of the resulting coated nanocrystal.
Dr. Murray testified that a controlled overcoating would have certain
properties with respect to completeness, crystallinity, and distinct boundary, but
did not identify where in the ‘605 patent such disclosure appeared nor explain why
one of ordinary skill would have understood “controlled overcoating” to be so
limited. That is, while such considerations regarding completeness, crystallinity,
and boundary may indeed influence the resulting structural properties of the
resulting coated nanocrystal, other factors such as the sheer thickness of the
overcoating would also influence such properties. There is therefore insufficient
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evidence to support Dr. Murray’s construction of the term “controlled
overcoating.”

Chosen or desired
Patent Owner argues that that the terms “size-selected,” “color-selected,”
and “controlled overcoating” indicate that steps of choice or selection are
performed (Patent Owner Appeal Br. 9-10). A choice or selection of a size or
color would involve picking out a desired color, size, or coating. We do not agree
that such a choice would limit the claim term because it does not confer a specific
structure or property of a core and coating of a nanocrystal population.

III. APPEAL BY PATENT OWNER

1. ANTICIPATION BY HINES
Claims 1-13, 16-19, 22-26, 33, 34, 37, 43, 45, 46, 48, 53, 58-70 and 75 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Hines3 (RAN 9).
Independent claims 1, 26, 43, 45, 53, and 58 are directed to coated
nanocrystals comprising size-selected or color-selected core and an overcoating,
where the core and overcoating comprise first and second semiconductor materials,
respectively. Claims 26 and 43 recite specific semiconductor materials. The
Examiner found that Hines discloses ZnS-capped CdSe nanocrystals, with a CdSe
core and ZnS coating (RAN 9).

3 Hines, M. and Guyot-Sionnest, P., Synthesis and Characterization of Strongly
Luminescing ZnS-Capped CdSe Nanocrystals, 100 J. Phys. Chem. 468-471 (1996).
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Patent Owner contends that Hines does not enable size-selected or color-
selected cores (Patent Owner Br. 7.) Patent Owner states that “[b]ecause Hines
does not describe how to produce a population of coated nanocrystals having a
core which has a size chosen from a number of different sizes, Hines does not put
the claimed subject matter ‘in the possession of a person of ordinary skill in the
field.’ In re Paulson, 30 F.3d 1475, 1479 (Fed. Cir. 1994).” (Id. at 8.) Patent
Owner also contends that Hines’ nanocrystals are structurally distinguished from
the claimed nanocrystals because “emission FWHM of the overcoated nanocrystals
is broader by about 10 nm than the emission of the cores before overcoating,
evidence that the size distribution of core population broadened during
overcoating.” (Id.) Thus, Patent Owner argues “Hines does not teach a population
of coated nanocrystals including a size-selected core; but describes overcoating
CdSe nanocrystals under conditions that actively reduce control over the sizes of
the cores.” (Id. at 9.) Patent Owner also contends that Hines does not teach “size-
selected cores” because “Hines describes only one set of conditions that produced
coated nanocrystals of only one core size.” (Id.)
These arguments are not persuasive. Even if it is true that overcoating
results in an increase in the size distribution of the cores, the cores described by
Hines still have a specific absorption spectrum which were produced by growing
crystals to a certain size, meeting the limitation of “size-selected” as we have
reasonably interpreted the term in light of the patent specification. The following
disclosure from Hines supports this finding:
[I]n this work, we followed more closely a variant[ ] from the original
method,[ ] which produces smaller amounts of material with a faster
turnover but still nearly monodisperse CdSe nanocrystals with well-
defined absorption features for small sizes (<40 Å). Since changes in
the amount injected and temperature of TOPO produces variations in
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the final CdSe size, the conditions described in the previous section
apply to the reproducible synthesis of rather monodisperse
nanocrystals between 27 and 30 Å as shown in their absorption
spectrum in their Figure 1. The ability to synthesize nearly
monodisperse CdSe without further size-selective precipitation8 is
evidently critical to retain a narrow size distribution with an additional
coating.
(Hines, p. 469, col. 1.)
Thus, Hines clearly describes producing nanocrystal cores of a specific size.
The fact that the cores might broaden in size during overcoating with the ZnS does
not negate the fact that methods were adopted to initially produce size-selected
cores.
With regard to the argument that Hines only teaches one set of conditions
and therefore does not teach size selection, we have already found that the claim
does not require a selection to be made because selection does not alter the
nanocrystal or make it any different than the nanocrystal taught by Hines. Patent
Owner has not provided evidence that the product of a process of “choosing
reaction conditions” makes the product any different than the product taught by
Hines. Moreover, Hines identifies conditions that affect the core size, and thus
enables making differently sized cores.
Patent Owner cites evidence that is said to show that core size could not be
reliably controlled (Patent Owner Appeal Br. 9-10). This evidence is not
persuasive. First, Patent Owner did not establish that such evidence reflected the
state of the art at the time the application was filed, the relevant date for
establishing enablement. Second, Hines specifically states that “excellent size
control” can be achieved for CdSe nanocrystals (id. at p. 468, col. 2). A size
selected core is a core with a defined optical spectrum, a property clearly described
by Hines for its core of a specific size (see, e.g., Hines, Figure 3).
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Claims 16, 26, 45, 48, and 53 each are directed to coated nanocrystals
comprising a core and a “controlled overcoating” of ZnS or a semiconductor
material. Patent Owner argues that the coated nanocrystals described in Hines lack
a “controlled overcoating” as that term would be understood by one of ordinary
skill in the art (Patent Owner Appeal Br. 11). Patent Owner’s argument is based
on Dr. Murray’s testimony that a “controlled overcoating” requires “a high degree
of completeness . . . , a high degree of crystallinity, and a distinct boundary
between the core material and the overcoating material.” (Second Murray Decl. ¶
20.) Dr. Murray testified that Hines overcoating does not possess these required
properties (id. at ¶¶ 21-25). However, as discussed above, we found that Dr.
Murray’s definition of overcoating was not consistent with the broadest reasonable
interpretation of the claims, and we did not adopt it. Rather, we interpret
“controlled overcoating” to mean an overcoating that has been applied to the core
to achieve specific optical and structural properties of the resulting coated
nanocrystal. Hines specifically discloses that “the fluorescence efficiency of the
ZnS capped clusters is dramatically enhanced” and other enhancements of optical
properties due to the capping (Hines, p. 469, col. 2; Abstract, p. 468). Thus, Hines
overcoating of CdSe nanocrystals with ZnS satisfies the corresponding claim
limitation.

Claims 6, 33, and 66
Dependent claims 6, 33, and 66 further recite that the size-selected cores of
the population of coated nanocrystals have diameters having no greater than 5%
rms deviation. Patent Owner contends that the disputed limitation is not described
by Hines. We addressed Patent Owner’s arguments concerning this same
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limitation on pages 8-13 of the ‘713 Decision. For consistency, since the
arguments appear to be the same in both cases, we incorporate herein the
discussion in the ‘713 Decision that Hines anticipates a 5% rms deviation.

Summary
For the above reason, we affirm the rejection of claims 1-13, 16-19, 22-26,
33, 34, 37, 43, 45, 46, 48, 53, 58-70 and 75 as anticipated by Hines.

2. OBVIOUSNESS IN VIEW OF HINES
Claims 9, 10, 23, 24, 62-64 and 75 stand rejected under 35 U.S.C. § 103(a)
as obvious in view of Hines (RAN 11).
Patent Owner argues that the rejected claims are patentable for the same
reason that independent claims 1, 16, and 58 are patentable over Hines (Patent
Owner Appeal Br. 3). As we affirmed the rejection of claims 1, 16, and 58, we
affirm the rejection of claims 9, 10, 23, 24, 62-64 and 75 for the same reasons and
for the reasons set forth by the Examiner.

3. OBVIOUSNESS IN VIEW OF HINES AND PREMACHANDRAN
Claims 11, 25, 67, and 68 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Hines and Premachandran4 (RAN 13).
Patent Owner argues that the rejected claims are patentable for the same
reason that independent claims 1, 16, and 58 are patentable over Hines (Patent
Owner Appeal Br. 4). As we affirmed the rejection of claims 1, 16, and 58, we

4 Premachandran, R. et al., The Enzymatic Synthesis of Thiol-Containing Polymers
to Prepare Polymer-CdS Nanocomposites, 9 Chem. Mater 1342-1347 (1997).
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affirm the rejection of claims11, 25, 67, and 68 for the same reasons and for the
reasons set forth by the Examiner.

4. OBVIOUSNESS IN VIEW OF HINES AND COFFER
Claims 11, 25, 67, and 68 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Hines and Coffer5 (RAN 15).
Patent Owner argues that the rejected claims are patentable for the same
reason that independent claims 1, 16, and 58 are patentable over Hines (Patent
Owner Appeal Br. 4). As we affirmed the rejection of claims 1, 16, and 58, we
affirm the rejection of claims 11, 25, 67, and 68 for the same reasons and for the
reasons set forth by the Examiner.

5. OBVIOUSNESS IN VIEW OF HINES, KATARI, AND MURRAY
Claims 49-52, and 54-57stand rejected under 35 U.S.C. § 103(a) as obvious
in view of Hines, Katari,6 and Murray (RAN 16)
Patent Owner argues that the rejected claims are patentable for the same
reason that independent claims 48 and 53 are patentable over Hines (Patent Owner
Appeal Br. 4). As we affirmed the rejection of claims 48 and 53, we affirm the
rejection of claims 49-52 and 54-57 for the same reasons and for the reasons set
forth by the Examiner.

5 Coffer, Jeffrey L. et al., Characterization of quantum-confined CdS
nanocrystallites stabilized by deoxyribonucleic acid (DNA), Department of
Chemistry, Texas Christian University (1992).
6 Bowen Katari, J.E. et al., X-ray Photoelectron Spectroscopy of CdSe
Nanocrystals with Applications to Studies of the Nanocrystal Surface, 98 J. Phys.
Chem. 4109-4117 (1994).
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6. ANTICIPATION BY KORTAN
Claims 26, 37, and 43 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Kortan7 (RAN 29). Because we found these claims anticipated by Hines, it is
unnecessary to reach this rejection.

7. OBVIOUSNESS IN VIEW OF KORTAN AND MURRAY
Claims 16, 22, 23, 25, 26, 33, 34, 37, and 43 stand rejected under 35 U.S.C.
§ 103(a) as obvious in view of Kortan and Murray (RAN 30).
Claim 16 is representative. Claim 16 is directed to coated nanocrystals
comprising a core including a first semiconductor material and a “controlled
overcoating” of ZnS, where “the cores of the population of nanocrystals have
diameters having no greater than 10% rms deviation.”
The Examiner found that Kortan teaches the synthesis of composite
semiconductor crystallites involving ZnS overcoating grown on CdSe seeds (RAN
30; Kortan, Abstract and p. 1328, col. 1). In particular, the Examiner found that
Kortan prepares (CdSe)(ZnS)4Ph particles, i.e., nanocrystals having a CdSe core
coated with a ZnS shell, as shown in Figure 2B of Kortan (id.). The Examiner
found that CdSe core has a diameter in the 30-35 Å range, and, thus, the core is
"size selected" as per claims 43 (RAN 30; Kortan, p. 1331, col. 2). The Examiner
found that “Kortan does not specifically teach that its CdSe cores have diameters
having no more than 10% rms deviation (claim 16) or no more than 5% rms
deviation (claim 33).” (RAN 31). However, the Examiner found that Murray

7 Kortan, A.R. et al., Nucleation and Growth of CdSe on ZnS Quantum Crystallite
Seeds, and Vice Versa, in Inverse Micelle Media, 112 J. Am. Chem. Soc. 1327-
1332 (1990).
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taught monodisperse coated nanocrystals having such values. The Examiner
concluded:
It would have been obvious to one of ordinary skill in the art at the time the
invention was made to have used Murray's monodisperse CdSe particles
having <5% rms deviation in diameter so as to prepare Kortan's ZnS-coated
CdSe particles because Kortan recognizes that optical and electronic
properties of the crystals are size dependent and desires uniform crystallites;
and Murray, as well, recognizes the desirability of monodisperse nanocrystal
structures.
(RAN 32.)
Patent Owner challenges the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art to coat Murray’s particles using
Kortan’s method. According to Patent Owner, the skilled worker would not have
been motivated to take the nanocrystals described in Murray and attempt to
overcoat them according to the methods of Kortan (Patent Owner Appeal Br. 15).
Patent Owner provided testimony by Dr. Murray that “reaction conditions
described in the Murray reference are incompatible with those of Kortan; most
dramatically, the cadmium source used in the Murray reference reacts dangerously
with water.” (Id.)
Murray reference uses dimethylcadmium as a metal source, which is
liquid at room temperature, and reacts violently and dangerously in
either air or water. It has long been known that many organometallic
reagents, particularly metal alkyls (dimethylcadmium being one
example) react violently and dangerously with oxygen and water.
Unlike metal salts, handling dimethylcadmium involves the risk of
fire (if it comes in contact with air or water) and requires special
precautions to avoid even small amounts of air or water. Because of
these hazards, metal alkyls, including dimethylcadmium, are never
used in aqueous reactions.
(Second Murray Decl. ¶ 52.)
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Where Kortan uses an aqueous system without any coordinating
solvent, the Murray reference uses coordinating organic solvents (e.g.,
TOP and TOPO). As mentioned, the dimethylcadmium in the Murray
reference is completely incompatible with any aqueous system.
(Second Murray Decl. ¶ 53.)
Requester provided evidence that a person of skill in the art would not be
dissuaded from combining Kortan and Murray. Specifically, Requester cited the
Dabbousi8 reference, published in 1994, three years before the priority date of the
'155 Patent. Dabbousi was co-authored by B.O Dabbousi, C.B. Murray, M.F.
Rubner, and M.G. Bawendi. Dabbousi and Bawendi are listed as co-inventors of
the ‘605 Patent and C.B. Murray is the declarant of the first and second Murray
Declarations and the author of the Murray reference.
Dabbousi describes the deposition of monolayers of size-selected CdSe
nanocrystals deposited on a water surface (Dabbousi, Abstract (“Size-selected
CdSe nanocrystallites capped with trioctylphosphine oxide are directly applied
onto the water surface of a LB trough and serve as the LB-active species.”)
According to Dabbousi, a spreading solution of the CdSe nanocrystals in
chloroform was prepared and the nanocrystals were then deposited at an air-water
interface (id. at p. 216 (“Experimental Section”)). The Dabbousi reference
persuasively shows that, contrary to Dr. Murray’s testimony, CdSe nanocrystals
had been used with water, and therefore would not have been expected to be
incompatible with an aqueous system, such as the system described by Kortan.
Patent Owner also argues that the nanocrystals described in Murray 1993
could not be put into inverse micelles as taught by Kortan. Patent Owner contends:

8 Dabbousi, B.O., Murray, C.B., Rubner, M.F., and Bawendi, M.G., Langmuir-
Blodgett Manipulation of Size-Selected CdSe Nanocrystallites, 6 Chem. Mater.
216-219 (1994).
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In the Murray reference, nanocrystals are prepared with a surface cap
of TOP/TOPO, such that the nanocrystal surface is surrounded by
hydrophobic octyl chains . . . A person of ordinary skill in the art
would have realized that Murray's octyl-capped nanocrystals would
not partition to the aqueous phase of Kortan's inverse micellar
medium, and therefore, attempting to overcoat Murray's nanocrystals
by Kortan's method would be futile.
(Patent Owner Appeal Br. 16.)
This argument is not persuasive. As found by the Examiner, Kortan
describes nanocrystals with the phenyl group as an organic layer on the outer
surface (RAN 31; Kortan, p. 1327, col. 2). Phenyl is hydrophobic. Thus, contrary
to Patent Owner’s arguments, Kortan describes nanocrystals capped with
hydrophobic materials, as does Murray 1993. Patent Owner’s argument does not
address this characteristic of Kortan’s nanocrystals.
Patent Owner also contends that Murray’s nanocrystals are high quality, but
Kortan’s are low quality. Based on these differences, Dr. Murray concluded that
“the difference in quality of the nanocrystals would not lead a person of skill in the
art to make high quality nanocrystals and then use them in a method known to
produce lower quality nanocrystals. See the second Murray declaration at
paragraph 54.” (Patent Owner Appeal Br. 16.)
This argument is also not persuasive. Even assuming that the Murray’s core
is of better “quality” than Kortan’s, the skilled worker would certainly have had
reason to substitute Murray’s better quality core in Kortan to obtain the benefits of
a core with better properties. The Examiner provided explicit and persuasive
reasoning as to why the skilled worker would have had reason to used Murray’s
monodisperse CdSe to prepare Kortan’s particles (RAN 62-63).
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For these reason, Patent Owner’s argument about the lack of reason to have
combined Kortan and Murray is not persuasive.

“Size-selected” and “controlled overcoating”
With regard to earlier arguments about size-selected and color-selected cores
(Patent Owner Appeal Br. 13), Murray expressly teaches isolating cores of
different sizes and their associated different color spectrum (Murray, p. 8707). As
to arguments about Kortan not describing a “controlled overcoating,” Patent
Owner attempts to distinguish Kortan’s overcoating from the claimed overcoating
based on certain properties that Kortan is said to lack (Patent Owner Appeal Br.
13-14). However, as explained above, the evidence does not support a narrow
definition of “controlled overcoating” that would restrict it to the properties
defined by Dr. Murray and argued by Patent Owner (id.)

Summary
For the foregoing reasons and those of the Examiner’s, we affirm the
rejection of claims 16, 22, 23, 25, 26, 33, 34, 37, and 43 as obvious in view of
Kortan and Murray.

8. OBVIOUSNESS IN VIEW OF KORTAN, MURRAY, AND
PREMACHANDRAN
Claim 25 stands rejected under 35 U.S.C. § 103(a) as obvious in view of
Kortan, Murray and Premachandran (RAN 33).
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The Examiner provided fact-based reasoning for rejecting the claims. Patent
Owner did not identify a defect in the Examiner’s fact-finding or reasoning. The
rejection is affirmed for the reasons set forth by the Examiner.

9. OBVIOUSNESS IN VIEW OF KORTAN, MURRAY, AND COFFER
Claim 25 stands rejected under 35 U.S.C. § 103(a) as obvious in view of
Kortan, Murray and Premachandran (RAN 33).
The Examiner provided fact-based reasoning for rejecting the claims. Patent
Owner did not identify a defect in the Examiner’s fact-finding or reasoning. The
rejection is affirmed for the reasons set forth by the Examiner.

IV. APPEAL BY REQUESTER
A cross-appeal was filed by the Requester in the instant ‘298 Reexamination
contending that the Examiner erred in not adopting rejections over the Kuno and
Danek publications. A cross-appeal was also filed by the Requester in the related
‘268 Reexamination. The issues for review listed in the cross-appeal in the ‘268
Reexamination are substantially the same issues listed in the instant ‘298
Reexamination, with the primary references being the same, but with some
differences with respect to the secondary references being cited. Compare pages
13-14 of the Requester’s Appeal Brief in the ‘268 Reexamination (“Requester ‘268
Appeal Br.”) to page 4 of the Requester’s Appeal Brief in the instant ‘298
Reexamination (“Requester ‘298 Appeal Br.”).
We compared both Briefs and found the only substantial differences
between the two briefs to be 1) the claims said to be anticipated or obvious in the
non-adopted rejections; and 2) claim limitations concerning the quantum yield of
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20
the photoluminescence. In the ‘268 Reexamination, claims 1 and others recited a
quantum yield of greater than 15%. In the instant ‘298 Reexamination, the
quantum yield recited in claim 1 and others is greater than 30%. Otherwise, both
the ‘268 and ‘298 Reexamination raised the same issues with respect to the non-
adopted rejections . Because the Requester relies on the same arguments for the
non-adopted rejections in the ‘268 and ‘298 Reexaminations, we see no need to
write a separate discussion in the instant ‘298 Reexamination, but rather refer to
and incorporate herein pages 27-33 of the ‘713 Decision in which we discussed our
reasons for affirming the Examiner’s decision not to adopt the rejections over the
Kuno and Danek publications.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for
requesting rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph (d) of this section, and for submitting comments under
paragraph (c) of this section may not be extended.
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002 may not be
taken “until all parties' rights to request rehearing have been exhausted, at which
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21
time the decision of the Board is final and appealable by any party to the appeal to
the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

PATENT OWNER:

STEPTOE & JOHNSON, LLP
1330 Connecticut Avenue, N.W.
Washington, DC 20036

THIRD PARTY REQUESTER:

WONG, CABELLO, LUTSCH
RUTHERFORD & BRUCCULERI, LLP
20333 SH 249 6th STREET
Houston, TX 77070

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