Ex Parte Carroll et al

Patent Trial and Appeal BoardNov 8, 2016

12443249 (P.T.A.B. Nov. 8, 2016)

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. 9151-79 7520 EXAMINER EISEMAN, ADAM JARED ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 12/443,249 03/29/2010 20792 7590 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 11/08/2016 David L. Carroll 11/08/2016 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 DAVID L. CARROLL, FAITH M. COLDREN, NICOLE H. LEVI, LAWRENCE X. WEBB, WILLIAM D. WAGNER, THOMAS L. SMITH, BRIAN WERNER, J. BAXTER McGUIRT, and MANOJ NAMBOOTHIRY Appeal 2015-002495 Application 12/443,249 Technology Center 3700 Before JENNIFER D. BAHR, JAMES P. CALVE, and BRANDON J. WARNER, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 3—5, 7—16, 20, 22—24, 32, 34—36, and 44. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2015-002495 Application 12/443,249 CLAIMED SUBJECT MATTER Claims 1, 20, and 32 are independent. Claim 1 is reproduced below. 1. A method of sensing pressure in a region of interest, comprising: (a) providing one or more sensor particles in said region, each of said sensor particles comprising: (i) a polymer support and (ii) a plurality of metallic particles operatively associated with said polymer support and one another, wherein said metallic particles sustain a plasmon upon excitation, and with said metallic particles configured so that the energy of said plasmon varies in response to pressure; (b) measuring a physical property of said metallic particles that varies in response to pressure; and then (c) determining the pressure in said region of interest from said detected physical property, wherein said measuring step (b) is carried out by: (i) exciting said sensor particles to produce emitted light therefrom; (ii) detecting a property of said emitted light, wherein said property varies in response to said energy of said plasmon; and wherein: said determining step (c) is carried out by determining the pressure in said region of interest from said detected property. REJECTIONS1 Claims 1, 3—5, 7—13, 20, 22—24, 32, 34—36, and 44 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wong (Ho and Wong, “Application of spectral surface plasmon resonance for gas pressure sensing,” IEEE 2002) and Lee (US 2008/0241262 Al, pub. Oct. 2, 2008), as evidenced by Jamiolkowski (US 2005/0113938 Al, pub. May 26, 2005) and Honiger (US 2004/0062809 Al, pub. Apr. 1, 2004). Claims 14—16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wong, Lee, and Johnson (US 2006/0189910 Al, pub. Aug. 24, 2006). 1 The Examiner withdrew the rejection of claims 3, 22, and 34 under 35 U.S.C. § 112, fourth paragraph. Ans. 8; see Final Act. 2. 2 Appeal 2015-002495 Application 12/443,249 ANALYSIS Claims 1, 3—5, 7—13, 20, 22—24, 32, 34—36, and 44 as unpatentable over Wong and Lee The Examiner found that Wong teaches the claimed methods except for sensor particles comprising a polymer support. Final Act. 3—5. The Examiner found that Lee teaches a polymer support for metal nanoparticles that sustain a plasmon upon excitation, and the plasmon energy varies with pressure on the polymer support. Id. at 5. The Examiner determined that it would have been obvious to operatively associate Wong’s pressure sensor to Lee’s polymer support “to provide a support/carrier for the nanoparticles used for obtaining the measurement.” Id.', Ans. 9. Appellants argue that it would not have been obvious to operatively associate Wong’s gold film with Lee’s polymer support because Wong and Lee measure pressure differently. Appellants argue that Wong measures the pressure of a gas that is exposed to a 50 nm gold film based on changes in the refractive index of the pressurized gas on the surface plasmon resonance of the gold film, whereas Lee disperses nano-particles in a polymer support and the nano-particles become conductive when compressed by pressure sufficient for electrical conduction to occur. Appeal Br. 5—6. The Examiner’s articulated reason for combining Lee’s polymer support with Wong’s pressure sensor “to provide a support/carrier for the metallic nanoparticles used for obtaining the measurement” in Wong is not supported by rational underpinnings. The Examiner has not explained why a skilled artisan would have been motivated to operatively associate Wong’s gold film with Lee’s polymer support when Wong senses pressure using the surface plasmon response of a 50 nm gold film operatively associated with a prism that is optimized for this sensing application. Wong, 75 (|1f3.1,4). 3 Appeal 2015-002495 Application 12/443,249 Lee disperses metallic nanoparticles in a polymer support to sense pressure when the particles are compressed into close enough proximity to become conductive. Lee 1159; Final Act. 5 (citing id.). It is not clear why a skilled artisan would have been motivated to support Wong’s gold film in a polymer support when Lee teaches that this configuration senses pressure via electrical conduction, whereas Wong teaches the use of a sputtered gold film to sense pressure via a surface plasmon response. Appeal Br. 5—6. In addition, Wong sputters a 50 nm gold film onto a prism, which serves as a substrate for the gold film, to sense pressure of a gas film via changes in the surface plasmon response of the gold film. Wong, 75 (13.1). Moreover, it is not clear how the Examiner proposes to operatively associate Wong’s gold film with Lee’s polymer support or why a skilled artisan would be motivated to do so in these circumstances. Thus, we do not sustain the rejection of claims 1, 3—5, 7—16, 20, 22—24, 32, 34—36, and 44. Claims 14—16 as unpatentable over Wong, Lee, and Johnson The Examiner relied on Johnson to disclose features of claims 14—16, which depend from claim 1, but not to remedy deficiencies of Wong or Lee discussed above. See Final act. 7—8; Appeal Br. 7. Thus, we do not sustain the rejection of claims 14—16. DECISION We reverse the rejections of claims 1, 3—5, 7—16, 20, 22—24, 32, 34— 36, and 44. REVERSED 4