Ex Parte Kodas et al

Patent Trial and Appeal Board

Aug 21, 2018

14056134 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/056,134 10/17/2013
60601 7590 08/22/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Toivo T. Kodas
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.
4303/0144PUS1 7038
EXAMINER
GREENE, NAN A
ART UNIT PAPER NUMBER
1619
MAIL DATE DELIVERY MODE
08/22/2018 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 TOIVO T. KODAS, MARK J. HAMPDEN-SMITH,
KLAUS KUNZE, DAVIDE. DERICOTTE,
KAREL VANHEUSDEN, and AARON STUMP 1
Appeal2017-008945
Application 14/056, 134
Technology Center 1600
Before JEFFREY N. FREDMAN, RY ANH. FLAX, and DAVID COTTA,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a method for making nanoparticulates. Claims 12, 14--16, 19--22, and 50-
54 are on appeal as rejected under 35 U.S.C. § 112, second paragraph, and
§ 103. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as "SICPA HOLDING SA."
Appeal Br. 2.
Appeal2017-008945
Application 14/056,134
STATEMENT OF THE CASE
The Specification states, "[a]s a result of the large number of
applications for nanoparticulate materials, a variety of methods have been
developed for making and processing nanoparticulates. One common
problem faced by these methods is the tendency of the nanoparticulates to
agglomerate because of their high surface area." Spec. 1.
Independent claims 12 and 50 are representative and are reproduced
below:
12. A gas dispersion method for making
nanoparticulates, the method comprising:
generating a flowing gas dispersion, as generated the gas
dispersion comprising droplets of a precursor medium dispersed
in a gas phase, with the precursor medium comprising liquid
vehicle and at least two precursors, a first said precursor being a
precursor to a first material and a second said precursor being a
precursor to a second material, the second material being a
surface-modifying material comprising a dispersing agent
capable of inhibiting agglomeration and promoting dispersion of
nanoparticulates in a dispersion medium;
in the gas dispersion, forming particles dispersed in the gas
phase, the particles dispersed in the gas phase each comprising
the second material and nanoparticulates that include the first
material;
the forming particles comprising removing at least a
portion of the liquid vehicle from the droplets;
wherein, the particles are decomposable in a liquid
dispersion medium to release the nanoparticulates from the
particles for dispersion of the nanoparticulates in the liquid
dispersion medium; and
wherein, when the particles are decomposed in and the
nanoparticulates are dispersed in the liquid dispersion medium,
2
Appeal2017-008945
Application 14/056,134
at least a portion of the second material modifies a surface of the
dispersed nanoparticulates.
50. A gas dispersion method for making
nanoparticulates, the method comprising:
generating a flowing gas dispersion, as generated the gas
dispersion comprising droplets of a precursor medium dispersed
in a gas phase, with the precursor medium comprising liquid
vehicle and at least two precursors, a first said precursor being a
precursor to a first material and a second said precursor being a
precursor to a second material;
in the gas dispersion, forming multi-phase particles
dispersed in the gas phase, the multi-phase particles each
comprising a dispersion of nanoparticulates and matrix, the
nanoparticulates maintained in a dispersed state by the matrix,
the nanoparticulates comprising the first material and the matrix
comprising the second material;
the forming multi-phase particles comprising removing at
least a portion of the liquid vehicle from the droplets to the gas
phase and reacting the first precursor to form the first material;
wherein, prior to the forming multi-phase particles, the gas
dispersion comprises a reducing agent; and
wherein the forming multi-phase particles comprises
reaction of the reducing agent to promote chemical reduction to
form the first material.
Appeal Br. 40, 41--42 (Claims App'x) (paragraph returns added for clarity).
The following rejections are appealed:
Claims 12, 14--16, and 19--22 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. Answer 3; see also Final Action 3.
3
Appeal2017-008945
Application 14/056,134
Claims 12, 14, 15, 19, 21, 22, and 50-54 stand rejected under
35 U.S.C. § 103(a) over Xia2 and Sharma. 3 Answer 7; see also Final Action
6-7.
Claims 16 and 20 stand rejected under 35 U.S.C. § 103(a) over Xia,
Sharma, and Choi. 4 Answer 7; see also Final Action 12.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Indefiniteness
For claims under examination, "'a claim is indefinite when it contains
words or phrases whose meaning is unclear,"' i.e., "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir.
2014); see also MPEP § 2173.02(I) (Rev. 07.2015, Nov. 2015) (advising
examiners that a rejection for indefiniteness is appropriate "after applying
the broadest reasonable interpretation to the claim, if the metes and bounds
of the claimed invention are not clear"). "A claim is not 'indefinite' simply
2 Bin Xia et al., Novel Route to Nanoparticle Synthesis by Salt-Assisted
Aerosol Decomposition, 13(20) Aov. MATER. 1579-82 (2001) ("Xia").
3 Pramod K. Sharma et al., Tailoring the particle size from µm ~ nm scale
by using a surface modifier and their size effect on the fluorescence
properties of europium doped yttria, 82 J. LUMINESCENCE 187-93 (1999)
("Sharma").
4 Han-Ho Choi et al., Enhanced cathodoluminescent properties of ZnO
encapsulated ZnS:Ag phosphors using an electrochemical deposition
coating, 82(15) APPL. PHYS. LETT. 2494--96 (2003) ("Choi").
4
Appeal2017-008945
Application 14/056,134
because it is hard to understand when viewed without benefit of the
specification." S3 Incorporated v. NVIDIA Corp., 259 F.3d 1364, 1369
(Fed. Cir. 2001). "[B]readth is not to be equated with indefiniteness." In re
Miller, 441 F.2d 689, 693 (CCPA 1971).
The Examiner determined that the language "surface-modifying
material" is indefinite because a person of ordinary skill would not
understand its metes and bounds; the Examiner determined that such
language might apply to the surface atoms of the nanoparticles/particulates
or alternatively to the matrix material or alternatively to something
altogether different that modifies the nanoparticles' surfaces. Final Action
4. The Examiner explained that "the application as filed does not define
applicant's terminology 'surface modifying material,' and while example[s]
in the specification provide a starting point" for understanding the language,
it is not enough. Id. at 5. Also, the Examiner determined that the claim
language "the particles are decomposable" is indefinite because it is unclear
what the metes and bounds of decomposable should be. Id. at 4. The
Examiner explains that the term decomposable is a term of art in the
chemical arts and relates to a chemical reaction to transform a material into
other components ( e.g., charcoal bums to produce CO2 and H20), but that
the claim language reads on such things as a salt matrix dissolving in water,
which is inconsistent with such an understanding in the field. Id. at 5.
Appellants argue that the language of claim 12 is clear that the
claimed second material is a swface-modifying material as described by the
examples in the Specification, and the materials recited by dependent claims
14--16 clarify the meaning of such a material. Appeal Br. 11-12 ( citing
5
Appeal2017-008945
Application 14/056,134
Spec. 40). Regarding the "decomposable" claim language, Appellants argue
the Specification describes what is meant by the decomposition of particles
and also argues that the dictionary definitions of decompose and
decomposition touching on the breaking down, splitting up, and
disintegrating of substances, reflect the meaning of the claim language.
Appeal Br. 13 (citing Spec. 37; Appeal Br. Exhibit A (HACKH'S CHEMICAL
DICTIONARY 200 (4th ed. 1969))). Appellants argue claims 14, 15, and 19--
21 separately and contend these claims are more specific about the surface-
modifying and decomposable elements. Appeal Br. 14--16.
We agree with Appellants and conclude the claim language at issue is
not indefinite.
As claimed, the second material is a surface-modifying material,
which modifies the surface of dispersed nanoparticles (nanoparticulates ),
and it includes a dispersing agent for the nanoparticles. Appeal Br. 40
(claim 12). Further, the second material may chemically react with the
nanoparticles to functionalize (i.e., modify) their surfaces. Id. at 41 ( claims
16, 20). Further, the second material may contribute to a matrix that
maintains the nanoparticles in a dispersed state. Id. (claim 22).
The Specification describes "[ o ]ne type of surface modification that
may be performed on the nanoparticulates is coating or covering a surface of
the nanoparticulates with a material that masks, or otherwise modifies, the
surface properties of the nanoparticulates." Spec. 40. The Specification
further describes that "[t]he surface-modifying material may function as a
surfactant to modify the surface properties" of nanoparticles, or it "may
function as a dispersing agent to promote uniform separation and dispersion
6
Appeal2017-008945
Application 14/056,134
of the nanoparticulates in a liquid medium," or it "may function as a
stabilizer to inhibit chemical degradation of the nanoparticulates." Id. at 41.
The Specification also describes that surface-modification can include
adding or removing functional groups from nanoparticulates. Id. at 21, 4 7,
49. The Specification also provides lists of exemplary materials that can be
surface-modifying materials. Id. at 41--49 (Tables 12 and 13). Further, the
Specification distinguishes surface-modification from compositional
modification and structural modification, the former involving changes to
the composition of the interior of nanoparticles and the later involving non-
compositional physical changes, e.g., to crystallinity or particle morphology,
of nanoparticles. Id. at 49-50.
Based on the disclosure of the Specification and in the context of the
claims, the claim language surface-modifying material is not unclear. It
means a material that can alter the surface of nanoparticles in essentially any
way, but particularly in the ways disclosed in the Specification, for example,
coating or wetting the nanoparticles, as opposed to altering the crystallinity
or morphology of the nanoparticles. Just because the term swface-
modifying material is broad does not mean it is indefinite.
Regarding the claim term "decomposable," we agree with Appellants
that the term is used according to its ordinary meaning, as evidenced by
Appellants' dictionary evidence. The term refers to a substance that breaks
down or splits up into simpler constituents, such as by, for example,
chemical reaction, weathering, or dissolving.
We reverse the indefiniteness rejection.
7
Appeal2017-008945
Application 14/056,134
Obviousness
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "In determining
whether the subject matter of a patent claim is obvious, ... [ w ]hat matters is
the objective reach of the claim. If the claim extends to what is obvious, it is
invalid under§ 103." Id. at 419.
The Examiner determined that appealed claims 12, 14, 15, 19, 21, 22,
and 50-54 would have been obvious over the Xia-Sharma prior art
combination and that appealed claims 16 and 20 would have been obvious
over this same prior art combination and also adding Choi. Final Action 6-
16 and Answer 7-10. Except as otherwise indicated below, we discern no
error in the Examiner's determinations and we agree with and adopt the
Examiner's findings of fact and rationale in support of the obviousness
rejection as set forth in the Final Office Action and Answer. Final Action 6-
16; Answer 7-10. We address Appellants' arguments below.
Appellants argue Xia is directed to a salt-assisted aerosol
decomposition process of forming nanoparticles and Sharma is directed to a
wet chemical method of forming nanoparticles, utilizing a surface-modifier,
and that these two processes are so different that the person of ordinary skill
in the art would not have combined the references and would not have
expected the Xia process to have benefited from using the surface modifier
of Sharma. Appeal Br. 1 7. This argument is repeated throughout Appellants
briefing in relation to several claims. It is not persuasive.
8
Appeal2017-008945
Application 14/056,134
As an initial matter, the evidence does not support that the distinction
between what Xia calls salt-assisted and what Sharma calls wet chemical is
as great as portrayed by Appellants. There is no evidence, other than
attorney argument, that the two processes for forming similar nanoparticles
are so different that the skilled artisan would not consult each of Xia and
Sharma in view of the other to combine features taught therein to be
advantageous in forming nanoparticles. Xia uses the term salt-assisted for
what appears to be an introduction of the use of salts as additives to prevent
agglomeration of nanoparticulate materials, but otherwise discloses using
wet components, e.g., solutions, mists, droplets, aqueous precursor solutions,
suspended in an aerosol and then heated to leave Y203-Zr02 nanoparticles,
and only such nanoparticles, after washing away the salt, which wets the
nanocrystallite surfaces of (i.e., modified the surfaces of), prevents
agglomeration of, and promotes dispersion of the nanoparticles. See
generally Xia. Sharma discloses synthesizing Eu203-Y203 nanoparticles
using a solution of ethanol and Tween-80 / Emulsogen-OG as a
nanoparticle-wetting surface-modifier to prevent agglomeration of the
nanoparticles, followed by drying and washing the product to leave
nanoparticles. See generally Sharma. Both processes are wet, both utilize
surface-modifiers, and both generally form nanoparticles in the same way
and produce very similar products.
Appellants also argue that one may not consider the teachings of Xia
alone to render claim 12 obvious because the Examiner has relied upon the
combination of Xia and Sharma for the obviousness rejection. Appeal Br.
18.
9
Appeal2017-008945
Application 14/056,134
This argument is not persuasive. Xia discloses that its salt additive is
a surface-modifying material, e.g., it wets the surface of nanoparticles,
promoting their dispersion and preventing agglomeration. Appellants appear
to recognize this in making an argument that Xia should not be considered
alone because the Examiner combined it with Sharma for some purposes.
We note the Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection. In re Bush, 296 F.2d 491,496 (CCPA 1961); In re Boyer, 363
F.2d 455, 458 n.2 (CCP A 1966). In any event, each of Xia alone or Xia and
Sharma combined teaches, suggests, and renders obvious the claimed
methods as each teaches and suggests a surface-modifying material that wets
the surface ofnanoparticles. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (That the prior art "discloses a multitude of
effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose taught by the prior art.").
Appellants argue "the rejection improperly relies upon an assertion
[that a surfactant and/or ethanol would be used in the Xia process] without
any supporting evidence." Appeal Br. 18-19 (citing MPEP § 2144.03 and In
re Ahlert and Kruger, 424 F.2d 1088 (CCPA 1970).
This argument is not persuasive. None of the claims require ethanol,
specifically, but the Specification describes ethanol as a preferred reducing
agent (which is claimed at claims 50-54). Spec. 26 (Table 7). Ethanol is
used as a solvent in Shanna's disclosed method. Ethanol is a well-known
liquid that is readily soluble in water (the primary ingredient in all alcoholic
10
Appeal2017-008945
Application 14/056,134
beverages) and is volatile (readily evaporates). Xia discloses a spray
pyrolysis method, which utilizes volatile liquids. It would have been
obvious to use components taught to be useful by Sharma in producing
nanoparticles, e.g., ethanol as a solvent, in the aqueous precursor solution of
the methods of producing similar nanoparticles as taught by Xia. Xia
encourages incorporating "additives" in its process and indicates that
"solvent is capable of accelerating the material formation kinetics and
improving the product crystallinity" in its process. Xia 1581. Also, Sharma
discloses that using Tween-80 in its process advantageously prevents
agglomeration, which is also an objective disclosed by Xia. Thus, using
such a surfactant in Xia's process would have been obvious.
Regarding claims 14, 15, 21, and 50, Appellants restate the claim
requirements and argue Xia does not teach it. Appeal Br. 20-21, 22, 23-24,
25-26. Further, Appellants again argue, as they did for claim 12, that
because Sharma is directed to a different process than Xia (wet chemical as
opposed to salt-assisted, respectively) and, therefore, cannot be combined
with Xia, the rejection fails to establish obviousness. Id. These arguments
are not persuasive. Statements in a brief that "merely mention [a] claim ...
and lack any type of separate, substantive argument concerning the claim"
are not sufficient to constitute separate argument regarding that claim under
37 C.F.R. § 4I.37(c)(l)(iv). In re Kao, 639 F.3d 1057, 1065 (Fed. Cir.
2011 ). Furthermore, we have addressed above that the methods and
elements disclosed by Xia and Sharma would have been obvious to
combine.
11
Appeal2017-008945
Application 14/056,134
Regarding claims 51 and 52, Appellants argue they require the
reducing agent be contained in the precursor medium and Xia, alone or in
view of Sharma, does not teach this. Appeal Br. 30, 31.
As discussed above, it would have been obvious to include the ethanol
disclosed as useful in Sharma' s process in the precursor materials of Xia' s
method in producing nanoparticles. The Specification discloses ethanol is a
preferred reducing agent. Spec. 24--26. Thus, it would have been obvious to
include a reducing agent in the precursor medium, as claimed.
Regarding claims 53 and 54, which are dependent from claim 50,
Appellants argue they require that the reducing agent reduces a temperature
at which the first material forms in the gas dispersion (by at least 50°C in
claim 54) and Xia, alone or in view of Sharma, does not teach this. Appeal
Br. 31-32, 34. Appellants argue that the Examiner's determination that the
ethanol of Sharma, when used in Xia's process as a co-solvent, would
function to reduce the material formation temperature in this way because
the Specification confirms that ethanol functions in such a way in a process
as claimed and as disclosed in the prior art, is in error because Xia and
Sharma cannot be combined. Id. at 32, 34. Appellants argue that
obviousness rejections cannot rely on inherency.
Appellants' arguments are not persuasive. We have addressed how
and why the cited references can and would have been combined. Further,
Where . . . the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. Whether the
rejection is based on "inherency" under 35 U.S.C. § 102, on
"prima facie obviousness" under 35 U.S.C. § 103, jointly or
12
Appeal2017-008945
Application 14/056,134
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO' s inability to manufacture products or to
obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote
omitted). Here, the Examiner has established that it would have been
obvious to include ethanol in the precursor materials, as disclosed by
Sharma, in the nanoparticle fabrication process disclosed by Xia. The
presumption of obviousness based on a reference disclosing structurally
similar compounds ( or methods) may be overcome where there is evidence
showing there is no reasonable expectation of similar properties in
structurally similar compounds. In re May, 574 F.2d 1082, 1094 (CCPA
1978). Here, because the combined prior art method and the claimed
methods are substantially identical, it is incumbent upon Appellants to
establish that providing ethanol to the Xia process, as suggested by Sharma,
would not result in the functional claim element of reducing formation
temperature. Appellants provide no such evidence.
Regarding claims 16 and 20, Appellants argue "[t]he examiner's final
rejection does not indicate how disclosure of Choi of enhanced
cathodoluminscent properties of ZnO encapsulated in ZnS:AG phosphor
relates to reacting the second material with the nanoparticulates to
functionalize a surface of the nanoparticulates." Appeal Br. 37. Appellants
also argue "the rejection does not state why or how the disclosures would
have been combined." Id.
The entirety of the Examiner's rejection rationale is "[t]he difference
between the rejected claims and the teachings of Xia et al. is that Xia et al.
does not expressly teach surface functionalizing the nanoparticulates. Choi
13
Appeal2017-008945
Application 14/056,134
et al. teaches enhanced cathodolmninescent properties of ZnO encapsulated
in ZnS:Ag phosphor using an electrochemical deposition coating (see whole
document)." Final Action 12-13.
We agree with Appellants that the Examiner has not established how
or why Choi teaches or suggests the claimed surface functionalizing. Upon
reviewing the reference, it appears to be directed to forming nano-sized
particles on micro-sized particulates. It is unclear how this relates to the
claimed functionalizing of nanoparticles. We conclude a prima facie case
has not been established here and we reverse the rejection of claims 16 and
20.
SUMMARY
The rejection of the claims as indefinite is reversed.
The obviousness rejection of claims 12, 14, 15, 19, 21, 22, and 50-54
is affirmed.
The obviousness rejection of claims 16 and 20 is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
14