Ruby N. Ghosh et al.

Patent Trials and Appeals BoardAug 15, 2019

13883759 - (D) (P.T.A.B. Aug. 15, 2019)

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. 13/883,759 05/06/2013 Ruby N. Ghosh GHO-006-P-US 1013 93613 7590 08/15/2019 SCHERRER PATENT & TRADEMARK LAW P.C. 17 E. CRYSTAL LAKE AVE CRYSTAL LAKE, IL 60014 EXAMINER TURK, NEIL N ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 08/15/2019 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 RUBY N. GHOSH, REZA LOLOEE, PER A. ASKELAND, and CHRISTOPHER T. WEEKS ________________ Appeal 2018-002041 Application 13/883,759 Technology Center 1700 ________________ Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and JANE E. INGLESE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–5, 7, 11–15, 17, 18, 20, 21, 37, 40, and 42–67 as being unpatentable over at least the combined prior art of Lefkowitz et al., (US 5,173,432, issued Dec. 22, 1992) (hereinafter “Lefkowitz”) and Seifert et al., (US 5,656,241, issued Aug. 12, 1997) (hereinafter “Seifert”)2. The Examiner also rejected all of the claims on appeal under 35 U.S.C. § 112 for 1 OptiO2 LLC is stated to be the real party in interest (Appeal Br. 1). 2 The Examiner applies various additional prior art to dependent claims (e.g., Ans. 7–9). A discussion of these rejections is not needed for disposition of this appeal. Appeal 2018-002041 Application 13/883,759 2 lack of written description. An oral hearing was conducted July 30, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative of the claimed subject matter (emphasis added to highlight key limitations in dispute): Claim 1: A composite comprising: at least one polymer and an amount of at least one luminophore, the composite formed by dispersing the luminophore as isolated clusters within a solution comprising a solvent wherein the luminophore within the solution has an unquenched emission lifetime T0(solution) that is linear, blending an amount of photocurable silicone monomers into the solution, and rapidly photocuring with ultraviolet light the ultraviolet curable silicone monomers with the amount of at least one luminophore dispersed therein as isolated clusters to form a polymer matrix wherein the polymer is crosslinked and the luminophore is dispersed as isolated clusters within the polymer matrix, wherein the luminophore comprises a hexanuclear molybdenum compound selected from the group consisting of those of formula (1) and those of formula (2): (1) M2MonW6-nX14 (2) MonW6-nX12 wherein M is a cation selected from the group consisting of Na+, K+ and NH4+, wherein n is 0 to 6, and wherein each X is independently a monoanionic ligand, wherein the composite has the following property indicating that the luminophore is dispersed as isolated clusters within the polymer matrix: an ending quenching ratio of about 95% or more of a starting quenching ratio in a measurement cycle wherein in the measurement cycle the composite is photoexcited 10,000 times, each photoexcitation for a duration Appeal 2018-002041 Application 13/883,759 3 and with energy at least sufficient to excite the luminophore from the ground state to the excited state, wherein the starting quenching ratio is measured at the start of the measurement cycle and the ending quenching ratio is measured at the end of the measurement cycle. Appeal Br. 26 (Claims Appendix)3. Independent claim 37 is directed to a composition similar to that of claim 1, and claim 42 is directed to a composite and recites similar subject matter as claim 1 (Claims Appendix 29–30). OPINION The § 112 Rejection for failing to comply with the written description requirement For an applicant to comply with the 35 U.S.C. § 112, first paragraph, written description requirement, the applicant’s specification must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). Each independent claim recites that the composite or composition is formed by dispersing the luminophore as “isolated clusters” (Claims Appendix, Appeal Br. 26, 29). The Examiner acknowledged that while the Specification described “isolated clusters” of luminophore, these clusters were formed by the curing and polymerization step, and not in the dispersing 3 The claim in the Appendix incorrectly list formulas (3) and (4); this has been corrected to list formulas (1) and (2). Appeal 2018-002041 Application 13/883,759 4 step (Ans. 3). The Examiner also contends that the Specification refers to isolated monomers of luminophore, and does not make clear that these are the same as “isolated clusters” (Ans. 11). Appellants’ position is that the Specification uses the words “isolated monomers” and “isolated clusters” interchangeably, and that one cannot have isolated clusters in the formed product if they are not isolated in the solution prior to polymerization of the silicone (Appeal Br. 6–9; Reply Br. 2–4). Appellants point out that the Specification describes “allowing the molybdenum clusters to remain as isolated monomers” (Reply Br. 3 (emphasis omitted); Spec. ¶ 73).4 Appellants further contend that as explained in the Ghosh Declaration,5 one cannot have the claimed property of an unquenched emission lifetime that is linear unless the solution has isolated clusters dispersed therein (Appeal Br. 7). A preponderance of the evidence supports Appellants’ position that one of ordinary skill in the art would have understood that the originally filed Specification encompasses dispersing the luminophore as isolated clusters for all the reasons explained by Appellants. Cf. Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (the claim need not use the same words as the specification; it is enough that one of ordinary skill in the art would recognize that the inventor invented what is claimed). Accordingly, we reverse the Examiner’s § 112 rejection on appeal. 4 Spec. ¶ 73 is at page 17 of the Specification and includes Spec. 17:10–12 as Appellants refer to page 17, lines 10–12 in the Reply Brief for this quote. 5 Declaration of Ruby N. Ghosh, dated November 30, 2015. Appeal 2018-002041 Application 13/883,759 5 The § 103 Rejection The Examiner has the initial burden of establishing a prima facie case of obviousness of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We construe each independent claim as requiring a final composition or composite of uv (ultraviolet light) cured silicon and luminophores, wherein the final product has the luminophore dispersed as isolated clusters within the polymer matrix, which is achieved by the process recited in each claim that requires “dispersing the luminophore as isolated clusters within a solution comprising a solvent wherein the luminophore within the solution has an unquenched emission lifetime T0(solution) that is linear” (claims 1, 37 and 42). The Examiner relies upon the product that would be obtained by modifying Lefkowitz’s process of admixing luminophores in a polymer matrix with a photocuring process as taught in Seifert for suggesting these features. There is no dispute that neither Lefkowitz nor Seifert explicitly disclose these features. Rather, the Examiner’s position is that Lefkowitz’s process, modified by Seifert’s process of photocuring a polymer with UV Appeal 2018-002041 Application 13/883,759 6 light, is the same as the process described in Appellants’ Specification, such that one would have expected the claimed isolated clusters and other resulting properties claimed (e.g., Ans. 7 (the Examiner states Lefkowitz/Seifert combination uses a “commensurate method” and “commensurate materials” as Appellants for achieving the claimed features); see also Ans. 19). Appellants contend that the Examiner has not met his burden for establishing that Lefkowitz/Seifert’s process and/or product is substantially identical to Appellants (Appeal Br. 13–15; Reply Br. 3–6). Appellants point out that both references are “totally silent” as to the recited isolated cluster feature, and that obtaining this feature requires conducting the process using processing parameters such that the clusters remain isolated as explained in the Specification (e.g., Appeal Br. 13; Reply Br. 3–6)6. Appellants further contend that the Examiner has improperly combined Lefkowitz’s and Seifert’s processes, then summarized that combined process and the process described in the instant application, and then made “an unsubstantiated assertion” that the resultant structure would be the same as claimed herein (Reply Br. 8; Appeal Br. 20–24). It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the 6 During the oral hearing, Dr. Ghosh stated the probability of getting isolated clusters by randomly mixing a solution with a photo physical optical indicator (luminophore) is close to zero. Appeal 2018-002041 Application 13/883,759 7 burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, however, the Examiner has not shown that the product disclosed in the prior art is substantially the same and/or is produced by substantially the same method described in Appellants’ Specification so as to shift the burden to Appellants to prove otherwise. A preponderance of the evidence supports Appellants’ position that the Examiner has not shown how the applied prior art teaches or suggests the claimed isolated clusters with its resulting properties in the product (Reply Br. 5–9; see also Appeal Br. 13–24). The Examiner has not directed us to or relied upon any recognition in the applied prior art for the recited features. In light of these circumstances, a preponderance of the evidence supports Appellants’ position that the Examiner has not pointed to any evidence to adequately establish that the applied prior art teaches or suggests the claimed combination of features for a composite or composition of silicone polymer with isolated luminophores as recited in each of Appellants’ independent claims. On the record before us, the Examiner has not shown that each and every limitation of the claim is either described or suggested by the prior art or would have been obvious based on the knowledge or inferences and creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Appeal 2018-002041 Application 13/883,759 8 The Examiner does not rely upon the other reference applied in the § 103 rejections of various dependent claims, or any other rationale to cure these deficiencies. Accordingly, we reverse all § 103 rejections on appeal. ORDER It is ordered that the Examiner’s decision is reversed. REVERSED