Ex Parte Baker et al

Patent Trial and Appeal BoardSep 14, 2018

13585884 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/585,884 08/15/2012 26384 7590 09/17/2018 NAVAL RESEARCH LABORATORY AS SOCIA TE COUNSEL (PA TENTS) CODE 1008.2 4555 OVERLOOK A VENUE, S.W. WASHINGTON, DC 20375-5320 FIRST NAMED INVENTOR Colin C. Baker 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. 101262-US2 2466 EXAMINER LE,HOAT ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 09/17/2018 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 Ex parte COLIN C. BAKER, WOOHONG KIM, GUILLERMO R. VILLALOBOS, JASBINDER S. SANGHERA, and ISHWAR D. AGGARWAL Appeal2017-001828 Application 13/585,884 1 Technology Center 1700 Before MARK NAGUMO, WESLEY B. DERRICK, and MONTE T. SQUIRE, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL 2 STATEMENT OF THE CASE Appellants seek review under 35 U.S.C. Â§ 134 from the maintained rejection under 35 U.S.C. Â§ 103 of claims 1, 3, 4, and 15-18 over Trojan- 1 Appellants identify The Government of the United States of America, as represented by the Secretary of the Navy, as the real party in interest. Appeal Br. 2. 2 We refer to the Specification filed August 15, 2012 ("Spec."), the Final Office Action dated August 26, 2015 ("Final Act."), the Appeal Brief filed February 22, 2016 ("Appeal Br."), and the Examiner's Answer issued September 15, 2016 ("Ans."). Appeal2017-001828 Application 13/585,884 Piegza3 in view of Sun4 and Martinet. 5 We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. THE INVENTION The subject matter of the claims on appeal relates to a nanoparticle containing monoclinic lutetium oxide. Spec., Abstract. Claims 1 and 15 are representative: 1. A nanoparticle comprising: monoclinic lutetium oxide; and a rare earth dopant. 15. A nanoparticle comprising monoclinic lutetium oxide; wherein the nanoparticle is free of cubic lutetium oxide. Spec. (Claims Appendix), 10. DISCUSSION On this record, having reviewed the grounds set forth by the Examiner, Appellants' arguments, and the Examiner's response, we are persuaded that the Examiner has failed to establish that the claims are unpatentable. For any ground of rejection, "the [E]xaminer bears the initial burden ... of presenting aprimafacie case ofunpatentability." In re 3 Trojan-Piegza et al., Preparation of nanocrystalline Lu203:Eu phosphor via a molten salts route, J. ALLOYS & COMPOUNDS 380 (2004) 118-22. 4 Sun et al., Phase transformation of ultrafine rare earth oxide powders synthesized by radio frequency plasma spraying, J. Eur. Ceramic Soc. 27 (2007) 125-30. 5 Martinet et al., Optical, structural and fluorescence properties of nanocrystalline cubic or monoclinic EuLu203films prepared by pulsed laser deposition, J. Luminescence 126 (2007) 807-16. 2 Appeal2017-001828 Application 13/585,884 Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In meeting this burden, the Examiner must supply the factual basis for the rejection without "resort[ing] to speculation, unfounded assumptions or hindsight reconstruction." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner relies on Trojan-Piegza for its teaching of lutetium oxide nanocrystalline particles doped with a rare earth element, i.e., europium. Ans. 2 (citing Trojan-Piegza, Abstract). The Examiner finds Trojan-Piegza discloses "nanocrystalline particles hav[ing] a cubic C-type structure with a crystallite size of20-33 nm." Id. (citing Trojan-Piegza 120). The Examiner relies on Sun for its teaching that "monoclinic phase of rare earth oxide powders [including Eu203J can be induced by subjecting cubic oxide powders to plasma spraying." Id. (citing Sun, Abstract). The Examiner further relies on Sun as "report[ing] that the plasma treatment produces nanoparticles of lutetium oxide as low as 5 nm." Id. at 3 ( citing Sun 130). The Examiner relies on Martinet for its teaching that "when the particle size of undoped lutetium oxide or Eu-doped lutetium oxide is reduced to below 10 nm, it 'cannot stay cubic but becomes monoclinic."' Id. ( citing Martinet 815). The Examiner finds that "Martinet confirms that the nanoparticles produced by the method of [Sun] would necessarily or be expected to be monoclinic." Id. The Examiner concludes both that "it would have been obvious to subject the Eu-doped lutetium oxide nanocrystalline particles of Trojan- Piegza to plasma spray in order to convert the cubic phase of the nanoparticles to monoclinic phase" (id. at 2-3) and that "it would have been obvious with a reasonable expectation of success in converting the cubic 3 Appeal2017-001828 Application 13/585,884 doped lutetium oxide of Trojan-Piegza to monoclinic phase by reducing the Eu-doped lutetium oxide particles to less than 10 nm" (id. at 3). Appellants contend that the Examiner has failed to "make a prima facie case of obviousness," highlighting that "there must be some rationale to support the rejection." Appeal Br. 4 (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)). As set forth by Appellants, the Examiner's rationale, which falls short, is "to subject the Eu-doped Lutetia nanocrystalline particles of Trojan-Piegza to plasma spray in order to convert the cubic phase of the nanoparticles to monoclinic phase." Id. (citing Final Act. 2). On this record, the Examiner has failed to set forth a prima facie case of obviousness. "[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention." Belden v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). The Examiner provides no basis for why the skilled artisan would seek to obtain monoclinic phase Eu-doped Lu203 crystals. See generally Final Act.; Ans. Moreover, while Martinet does state that "specific Eu3+ fluorescence properties of the different phases, monoclinic and cubic, were registered" (Martinet, Abstract), Martinet sought to maintain the cubic structure of its Lu203 nanocrystalline films while decreasing crystalline size (id. at 815 (suggesting that "other deposition conditions should be looked for" and that "[a]nother process for nanocrystal formation should be investigated")). Sun's disclosure of nanoparticles comprising lutetium oxide, on this record, is also not sufficient to establish the claims prima facie obvious. Claim 1 requires a rare earth dopant, which is lacking from Sun's Lu203 nanoparticles. Claim 15 does not require a rare earth dopant, but does 4 Appeal2017-001828 Application 13/585,884 require that "the nanoparticle is free of cubic lutetium oxide" ( emphasis added). The Examiner relies on Martinet as "confirm[ing] that the nanoparticles [ that happen to be smaller than 10 nm] produced by the method of [Sun] would necessarily or be expected to be monoclinic." Ans. 3. The Examiner, however, fails to establish that any of the monoclinic crystallite formed in Sun necessarily lies in nanoparticles smaller than 10 nm that the Examiner contends would not contain cubic crystallite. Moreover, the Examiner also fails to establish that the pulsed laser deposition on fused-silica substrates in Martinet is sufficiently similar to the inductively coupled radio frequency plasma spraying in Sun to reasonably conclude that Sun's nanoparticles of less than 10 nm would be free of cubic Lu203. Cf In re Montgomery, 677 F.3d 1375, 1379-80 (Fed. Cir. 2012) ("The inherent result must inevitably result from the disclosed steps; '[i]nherency ... may not be established by probabilities or possibilities."') ( citations omitted). Rather than address the differences squarely, the Examiner instead relies on Martinet's statement, "decreasing the size of cubic crystallites is limited to about 10 nm, at which point the film cannot stay cubic but becomes monoclinic or amorphous" (Martinet 815), as an absolute without qualification. Ans. 5, 7. Martinet, however, points to "crystallization in the plume instead of at the film's surface" as an approach to obtain "cubic films with crystallites smaller than about 10 nm" (Martinet 815), highlighting the error in the Examiner's reasoning that Sun's nanoparticles smaller than 10 nm would be free of cubic Eu203 (see Reply Br. 1-2). Accordingly, the Examiner's articulated reasoning falls short of that necessary for a prima facie case. See Warner, 379 F.2d at 1017; see also 5 Appeal2017-001828 Application 13/585,884 Oetiker, 977 F.2d at 1445. We decline to scour the record in the first instance for facts that might support the rejection, as our primary role is review, not examination de nova. On this record, thus, we are constrained to reverse the obviousness rejection of claims 1, 3, 4, and 15-18 over Trojan-Piegza, Sun, and Martinet. DECISION The Examiner's decision rejecting claims 1, 3, 4, and 15-18 is REVERSED. REVERSED 6