Ex Parte Rand et al

Patent Trial and Appeal BoardApr 16, 2013

10915410 (P.T.A.B. Apr. 16, 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. 10/915,410 08/11/2004 Barry P. Rand Y3422-91101 7675 111687 7590 04/16/2013 Duane Morris LLP (UDC) 30 South 17th Street Philadelphia, PA 19103 EXAMINER TRINH, THANH TRUC ART UNIT PAPER NUMBER 1755 MAIL DATE DELIVERY MODE 04/16/2013 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 ____________ Ex parte BARRY P. RAND and STEPHEN R. FORREST ____________ Appeal 2011-013324 Application 10/915,410 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, MARK NAGUMO, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek relief from the final rejection of claims 1, 3, 6-21, and 25-29 as obvious in view of Oldenberg1 combined with additional references. We REVERSE. The independent claims specify “nanoparticles consisting of a core and an insulating encapsulation layer[.]” Claims 1, 25, and 27 (emphasis added). Claim 1 is illustrative: 1. A device comprising: a first electrode; a second electrode; 1 US 6,685,986 B2, issued February 3, 2004. Appeal 2011-013324 Application 10/915,410 2 a photo active region comprising a first donor layer and a first acceptor layer, wherein each of the first donor layer and the first acceptor layer is an organic material, disposed between and electrically connected to the first electrode and the second electrode; and a plurality of nanoparticles consisting of a core and an insulating encapsulation layer, wherein the core is comprised of a metal, doped degenerative semiconductor or semiconductive material, said encapsulated nanoparticles dispersed within said photo active region wherein the nanoparticles have a plasmon resonance and said photo active region generates excitons by absorbing electromagnetic radiation when said device is exposed to electromagnetic radiation, wherein said insulating material encapsulating the nanoparticles prevents quenching of the excitons at the nanoparticles. The transitional phrase “consisting of” excludes nanoparticles having an additional layer disposed upon the insulating encapsulation layer. See Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986) (transitional phrase “consists of” in a clause of the body of a claim limits that clause to the components recited therein). A dispositive question arises whether Oldenburg discloses or suggests nanoparticles consisting of a core (comprised of a metal) and an insulating encapsulation layer as required by Appellants’ claims. Compare Ans. 6, 18- 20 to App. Br. 5-6 and Reply Br. 2-3. The Examiner finds that Oldenburg discloses nanoparticles having a core layer and an adjacent shell layer that are both composed of “metal or metal-like” substances, which together may be considered a “core comprised of [a] metal” as specified in claim 1. Ans. 19. Given that Oldenburg discloses that “[a]dditional layers, such as a non-conducting layer,” may be Appeal 2011-013324 Application 10/915,410 3 disposed upon the shell layer, the Examiner finds that Oldenburg suggests nanoparticles consisting of a metal core and a “nonconducting layer bound to the shell layer” without any additional layers disposed thereupon. Id. (quoting Oldenburg 5:5-16). That finding is in error because Oldenburg, when read in its entirety, unequivocally discloses that, where the nanoparticles include just one nonconducting or insulating encapsulation layer, that layer must be “surrounded by a layer that is made of a conducting material.” Oldenburg 5:66-6:1. Oldenburg contemplates a two-layer nanoparticle that consists of an inner core layer and an outer shell layer. Id. at 4:63-67 (“compositions of the present invention are particles that have at least two layers” wherein an “innermost layer is said to be a core” and a “layer that surrounds the core is said to be a shell layer”); 5:34 (“[o]ne layer of a particle is its core”). However, where the nanoparticles consist of two layers, “the core is a nonconducting layer.” Id. at 5:34-35; compare Ans. 19 (finding that Oldenburg suggests a nanoparticle wherein “the innermost layer and the [adjacent] shell” are both composed “of metal or metal-like material”). Oldenburg’s nanoparticles are not limited to two layers and may include “[a]dditional layers . . . bound to [the] shell layer” that is immediately adjacent to the core layer. Id. at 5:5-12. But in such embodiments, at least “one shell layer” must be a “conductor” relative to an “adjacent inner layer.” Id. at 5:2-5 (“[i]t is preferred that at least one shell layer readily conduct electricity, however, the invention only requires that one shell layer have a lower dielectric constant than the adjacent inner layer”); 5:14-16 (“for the purposes of this invention the term conductor is defined by reference to the adjacent inner layer and includes any material Appeal 2011-013324 Application 10/915,410 4 having a lower dielectric constant than its immediately adjacent inner layer”). On this record, we find as a matter of fact that, where Oldenburg’s nanoparticles have more than two layers, at least one shell layer must be a “conductor” relative to “its immediately adjacent inner layer.” Id. at 5:14- 16. Stated in a slightly different way, where the nanoparticles include only one nonconducting layer (as specified in Appellants’ claims), Oldenburg requires that the nonconducting layer be “surrounded by a layer that is made of a conducting material.” Oldenburg 5:66-6:1. For the above reasons, we agree with Appellants that the Examiner misreads Oldenburg to disclose nanoparticles consisting of a metal core and a “nonconducting layer bound to the shell layer” without any additional layers disposed thereupon. Ans. 19 (quoting Oldenburg 5:5-16); see App. Br. 5-6. That finding conflicts with Oldenburg’s clear teaching that, where the nanoparticles contain only one nonconducting layer, that layer must be “surrounded by a layer that is made of a conducting material.” Oldenburg 5:66-6:1. On this record, the Examiner fails to establish that the subject matter of Appellants’ claims would have been obvious over the applied art. We thus reverse the decision of the Examiner. REVERSED sld