Ex Parte Whitcomb et al

Patent Trial and Appeal BoardMay 27, 2016

13110977 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/110,977 05/19/2011 70523 7590 Carestream Health, Inc. ATTN: Patent Legal Staff 150 Verona Street Rochester, NY 14608 05/31/2016 FIRST NAMED INVENTOR David R. Whitcomb 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. 95105 4592 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 MAILDATE DELIVERY MODE 05/31/2016 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 R. WHITCOMB, WILLIAM D. RAMSDEN, and DOREEN C. LYNCH Appeal2014-009933 Application 13/110,977 Technology Center 1700 Before CHUNG K. PAK, PETERF. KRATZ, and GEORGE G. BEST, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal1under35 U.S.C. Â§ 134 from the Examiner's final rejection of claims 1-5, 8-10, and 21-23. We have jurisdiction pursuant to 35 U.S.C. Â§ 6. Appellants' claimed invention is directed to a method of making a metal nano wire from a reducible metal ion. 2 1 Appellants state Carestream Health, Inc. is the real party in interest (Br. 1 ). 2 Appellants state that "[ n Jo appeals or interferences are known which will directly affect or be directly affected by or have bearing on the Board's decision in the pending appeal" (Br. 1 ). However, this statement may not be complete and/or maintained up to date. For instance, the statement does not apprise the Board of other appeals involving matters/issues that could have Appeal2014-009933 Application 13/110,977 Claim 1, the sole independent claim on appeal, is illustrative and reproduced below: 1. A method comprising: providing at least one first composition comprising a first molar quantity of at least one first reducible metal ion; and reducing the at least one first reducible metal ion to at least one first metal nanowire in the presence of a second molar quantity of at least one second metal ion comprising tin in its + 2 oxidation state, wherein the ratio of the second molar quantity to the first molar quantity is from about 0. 0001 to about 0 .1. The Examiner relies on the following prior art as evidence in rejecting the appealed claims: Brandes Wang US 2004/0086646 Al US 2009/0196788 Al May 6, 2004 Aug. 6,2009 The Examiner maintains the following grounds of rejection: Claims 1-5, 8-10, and 21-23 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Wang in view of Brandes. We reverse. Our reasoning follows. It is well settled that the burden of establishing a prima facie case of non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). been presumed close enough to merit identification in the Appeal Brief, such as Appeal No. 2015-000064 (Board Decision mailed May 13, 2016), which involved a provisional rejection of the appealed claims of the Application for Patent involved in that appeal (Application No. 13/449,354; Notice of Appeal filed April 15, 2014) on the ground of non-statutory obviousness type double patenting over the claims of the subject Application (See Board Decision in Appeal No. 2015-000064, n. 2). 2 Appeal2014-009933 Application 13/110,977 Wang is directed to a method of producing silver nanostructures, such as nanowires via the solution based "polyol process" wherein "the polyol serves as a solvent for the silver compound as well as a solvent for the reaction (i-f 26; see i1 25). Wang teaches that polyvinyl pyrrolidone (PVP) can be employed as an organic protective agent in the polyol synthesis of nanowires to prevent sintering (particle agglomeration) and permits production of the desired nanostructure (i1i195-98). Furthermore and as found by the Examiner, Wang teaches that PVP can also function as a supplemental reducing agent in the reaction solution (Ans. 2; Wang i-fi-f 145- 147). The Examiner has determined that Wang does not teach adding Sn ion in its +2 oxidation state to the reaction solution (composition) (id.). The Examiner turns to Brandes and finds that Brandes teaches that a tin compound in such an oxidation state "can be used as a reducing agent to reduce silver compound in solution (section 30)" (Ans. 3). Based thereon, the Examiner maintains that [a ]bove references in combination make clear that PVP and Sn(II) compound have been individually used [as] a reducing agent to reduce silver compound in solution. It is obvious to combine two compositions each of which is taught by prior art to be useful for same purpose; idea of combining them flows logically from their having been individually taught in the prior art. The combination of active ingredient with the same character is merely the additive effect of each individual component. See In re Kerkhoven, 205 USPQ 1069 (CCPA 1980). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the Sn(II) compound of Brandes et al. with the PVP of Wang et al. with expected success. (Ans. 3.) 3 Appeal2014-009933 Application 13/110,977 As argued by Appellants, however, the Examiner has not established that the stannous compounds of Brandes that are used as part of a silver colloid solution in activating pickled surfaces of a substrate prior to an electroless metal plating step have the same or equivalent functionality or purpose as the PVP organic protective agent of Wang in Wang's polyol process for producing silver nanowires (Br. 4--5). Consequently, the Examiner has not established an apparent reason for the proposed modification of Wang based on the combined teachings of the applied prior art. As stated in KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), "'[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"' (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). The Examiner has not carried the burden to fully address the differences between the teachings of each of the applied prior art references from each other in proposing their combination in an attempt to establish the obviousness of the claimed subject matter and adequately explain why, regardless of the differences, one of ordinary skill in the art would have been led by the disparate teachings of Brandes and Wang to make the modifications of Wang's silver nanowire production method that are necessary to yield a method that would correspond to the method required by Appellants' claim 1 and with a reasonable expectation of success in so doing. Thus, the record indicates that the Examiner used impermissible hindsight in rejecting the Appellants' claims. See In re Warner, 379 F.2d 1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must 4 Appeal2014-009933 Application 13/110,977 rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art"). Accordingly, we do not sustain the Examiner's rejection. CONCLUSION The Examiner's decision to reject the appealed claims is reversed. REVERSED 5