Sachin Khapli et al.

Patent Trials and Appeals Board

Dec 10, 2019

14742547 - (D) (P.T.A.B. Dec. 10, 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.
14/742,547 06/17/2015 Sachin Khapli 046434-0545 6505
27433 7590 12/10/2019
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
CONIGLIO, AUDREA JUNE BUCKLEY
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
12/10/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SACHIN KHAPLI and RAMESH JAGANNATHAN1
________________

Appeal 2018-002683
Application 14/742,547
Technology Center 1600
________________

Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
RYAN H. FLAX, Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1We use the word “Appellant” herein to refer to the “applicant” as defined in
37 C.F.R. § 1.142. Appellant identifies New York University as the real
party-in-interest. App. Br. 2.
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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–17.2 Specifically, claims 1–3, 6–9,
11, and 17 stand rejected as unpatentable under 35 U.S.C. § 103 as being
obvious over the combination of Chen et al. (US 2004/0137214 A1, July 15,
2004) (“Chen”) and R.E. Sievers et al., Formation of Aqueous Small Droplet
Aerosols Assisted by Supercritical Carbon Dioxide, 30:1 AEROSOL SCI. &
TECHNOL. 3–15 (1999) (“Sievers”).
Claims 4 and 5 stand rejected as unpatentable under 35 U.S.C. § 103
as being obvious over the combination of Chen, Sievers, and Mehta et al.
(US 2005/0220994 A1, October 6, 2005) (“Mehta”).
Claims 10, 12, 13, 15, and 16 stand rejected as unpatentable under
35 U.S.C. § 103 as being obvious over the combination of Chen, Sievers,
and Weber et al. (US 8,187,255 B2, May 29, 2012).) (“Weber”).

2 Appellant also alleges that claim 21 was improperly withdrawn by
Examiner as being constructively directed to a non-elected invention. App.
Br. 10–11 (citing Final Act. 5). Appellant seeks our reversal of that
withdrawal. Id. Such an action is not within the appellate jurisdiction of
the Board, which extends to appeals only from the Examiner’s rejection of
claims. See 37 C.F.R. § 41.31(a)(1) (“Every applicant, any of whose
claims has been twice rejected, may appeal from the decision of the
examiner to the Board ….”). Rather, Appellant may petition the Director
for review of the Examiner’s election requirement and claim withdrawal.
37 C.F.R. § 1.144. However, Appellant is advised that such a petition
“may be deferred until after final action on or allowance of claims to the
invention elected, but must be filed not later than appeal.” Id.
Consequently, because the issue of claim 21’s withdrawal by the Examiner
is not within our appellate jurisdiction, we do not reach this issue.
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Claim 14 stands rejected as unpatentable under 35 U.S.C. § 103 as
being obvious over the combination of Chen, Sievers, and Ford et al. (US
8,057,901 B2, November 15, 2011) (“Ford”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed a processing technique for creating
nanowires and hierarchically porous micro/nano structures of ceramic
materials. Spec. Abstr.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A process comprising:

mixing a stream of supercritical CO2 with an aqueous
solution of an organic salt in a continuous flow operation;

creating an aerosol from the mixture; and

depositing the aerosol on heated substrates

App. Br. 19.

ISSUES AND ANALYSES
We adopt the Examiner’s findings, reasoning, and conclusion that the
claims on appeal are obvious over the prior art cited by the Examiner. We
address the arguments raised by Appellant below.

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Issue
Appellant argues that the Examiner erred in finding the rejected
claims to have been obvious because the cited references fail to teach the
limitations for which they are cited. App. Br. 11.

Analysis
The Examiner finds that Chen teaches a method of manufacturing a
material with a surface nanometer functional structure using the properties
of supercritical fluids to carrier a precursor to the functional material
coating. Final Act. 7. The Examiner finds that Chen teaches that carbon
dioxide supercritical fluid undergoes a vaporization reaction (i.e., an
“aerosol”) and is then distributed on and adhered to a substrate to form a
nanometer functional structure. Id. at 7–8 (citing Chen Abstr.). These steps
meet the recited “mixing” and “creating” steps of claim 1.
The Examiner finds that, although Chen teaches acetates among the
precursor materials, Chen does not teach an “organic salt” as recited in claim
1, and as defined by Applicant in claim 8. Final Act. 8. Nor, the Examiner
finds, does Chen teach deposition of the aerosol onto heated substrates, as
recited in claim 1. Id.
However, the Examiner finds, Sievers teaches the formation of
aqueous small droplet aerosols assisted by supercritical carbon dioxide.
Final Act. 8. In other words, the Examiner finds, Sievers teaches details of
Chen’s methodology of aerosol formation and deposition. Id. Sievers
further specifies that thin films of metals or metal oxides can be formed by
directing an aerosol containing coating precursor onto a heated substrate. Id.
(citing Sievers Abstr.). The Examiner finds that both Chen and Sievers are
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directed to a methodology using supercritical carbon dioxide to form surface
coating/functionalization. Id. at 9.
The Examiner concludes that it would have been prima facie obvious
to a person of ordinary skill in the art at the time the invention was made to
use the particular aerosol droplet formation process specified by Sievers, as
well as the deposition onto a heated substrate, as taught by Sievers and
Chen, with a reasonable expectation of success, to have made the claimed
invention. Final Act. 9. The Examiner further concludes that a skilled
artisan would have been motivated to combine the references because Chen
teaches the methodology and Sievers defines the state of the art with respect
to aerosol formation assisted by supercritical carbon dioxide. Id.
Appellant argues, first, that a “vapor” would be understood by a
person of ordinary skill in the art to refer to the gaseous form of a substance.
App. Br. 12 (citing, e.g., T. Cheng, Chemical evaluation of electronic
cigarettes, 23 (Suppl. 2) Tobacco Control ii 11– ii 17, ii 11 (2014)
(“Cheng”) (“Vapour refers to the gaseous state of a substance….”).
Specifically, argues Appellant, a vapor is a substance that is in gaseous state
but, at a temperature below the critical point, it can be condensed into
liquid/solid phase. Id. In contrast, Appellant asserts, an aerosol is a
colloidal mixture wherein tiny particles of liquid, solid, or both, are
dispersed within a gas/vapor. Id. (citing Cheng ii 11 (“…an aerosol is a
suspension of fine particles of liquid, solid or both in a gas”). Appellant
contends that, unlike a vapor, an aerosol would be understood by a skilled
artisan to refer to a mixture of phases. Id. Appellant notes that this
distinction is consistent with the definition of aerosol provided in the
Advisory Action, viz.: “[a] substance consisting of very fine particles of a
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liquid or solid suspended in a gas.” Id. (quoting Adv. Act., filed July 27,
2017 at 4).
Appellant disputes the Examiner’s finding that “any distinction
between aerosol and vapor appears to be the size of the particles suspended
and possible the medium in which said particles are suspended and not a
distinction between the process of Chen and the process instantly claimed”
as being without basis in fact or logic. App. Br. 12 (quoting Final Act. 2–3).
Appellant argues that, to the contrary a person of ordinary skill in the art
would have understood a vapor and an aerosol as being different in form
rather than merely in particle size. Id. at 10 (citing, e.g., Wikipedia, Vapor,
available at https://en.wikipedia.org/wiki/Vapor (last visited November 25,
2019) (stating that “[a] vapor is different from an aerosol”).
Appellant next turns to Chen, arguing that Chen teaches a release of
pressure from the high pressure vessel having the super critical liquid
causing a vaporization reaction, and that a skilled artisan would have
understood that such a vaporization reaction does not form an aerosol. App.
Br. 13. Rather, Appellant argues, the vaporization reaction, as described by
Chen, results in the supercritical fluid (carbon dioxide) undergoing a phase
change to gas and leaving the organic precursor (a solid) on the substrate.
Id. According to Appellant, Chen does not teach that the vaporization
should or could result in aerosol formation. Id.
Appellant argues that the teachings of Sievers do not cure the alleged
deficiencies of Chen. App. Br. 14. Appellant asserts that Sievers teaches an
embodiment where a substrate is heated to 500–600°C. Id. (citing Sievers
12). Appellant contends that Sievers describes the decomposition of metal
precursors at such high temperatures (600–630°C) where the evaporation of
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water takes place in the aerosol itself. Id. (citing Sievers 12). Appellant
therefore argues that the aerosol is not deposited on the heated substrate, but
evaporated with the residual solids deposited on the metal. Id. Appellant
argues that, because the aerosol is not deposited, there is no formation of the
“coffee rings,” such as may demonstrate evaporation after deposition rather
than before. Id. Appellant contends that this is supported by Sievers’
teaching the formation of mirror-like uniform films, which demonstrates that
the materials are not be deposited as described in the claimed invention but
rather by evaporation of the airborne aerosol, followed by deposition of the
remaining solid materials. Id. (citing Sieves 12). Appellant disputes the
Examiner’s reasoning that it would have been prima facie obvious to start at
room temperature and increase the temperature as necessary to achieve the
desired deposition, because it overlooks that neither Sievers or Chen are
concerned with depositing the aerosol on heated substrates. Id. Appellant
contends that Sievers teaches the use of temperatures that result in
evaporation of the aerosol before being deposited on the substrate, as
evidenced by the mirror-like film. Id. at 14–15.
Appellant argues further that, with respect to the claimed temperature
range, dependent claim 7 recites: “wherein the heated substrate is at a
temperature of about 80°C to about 150°C, whereas Sievers teaches, in one
embodiment, a temperature of 500–600°C. App. Br. 15. Appellant contends
that the Examiner finds that it would have been obvious to start at room
temperature and increase the temperature as necessary, citing the ideal gas
law as motivation. Id. (citing Final Act. 9). However, Appellant notes the
Examiner acknowledges that the ideal gas law is inapplicable to a closed
system such as that taught by Sievers. Id. (citing Final Act. 4).
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Nevertheless, Appellant asserts, the Examiner provides no supplementary
reasoning to demonstrate why the temperature would be varied outside the
500–600°C range expressly specified in Sievers. Id. Furthermore,
Appellant argues, the Examiner does not explain why a skilled artisan would
expose the aerosol to the plate still being heated, as opposed to once fully
heated, given the goal of evaporating the aerosol while airborne. Id.
Appellant asserts that the material deposited would behave differently based
upon the temperature. Id. In support of this contention, Appellant points to
the Specification’s disclosure of instantaneous boiling and evaporation. Id.
Appellant argues further that a skilled artisan would not have
combined the teachings of Chen and Sievers in the manner found by the
Examiner. App. Br. 15. Appellant argues that Sievers teaches the use of
supercritical carbon dioxide for formation of aerosols, but teaches several
different embodiments. Id. According to Appellant, Chen teaches formation
of surface nanometer functional structures from a supercritical fluid. Id.
Appellant contends that, even if one were to modify Chen to use the aerosol
taught by Sievers, the Examiner provides no motivation to use the
embodiments of Sievers that produce a uniform film, when the intended
purpose of Chen is to accomplish VLS nanowire growth. Id.
We are not persuaded by Appellant’s arguments. We agree with
Appellant’s distinction between the definitions of an aerosol and a vapor.
Furthermore, we acknowledge that Chen teaches:
According to the steps of the invention, the substrate is first
placed in a high-pressure container, which is then filled with a
supercritical fluid such as carbon dioxide.… After the fluid
inside the container reach its reaction balance point, the pressure
inside the container is released at an appropriate speed. The
supercritical fluid correspondingly undergoes a vaporization
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reaction, making the precursor adhere onto the surface of the
substrate and forming a surface nanometer functional structure.

Chen ¶ 14. Chen thus teaches that release of the supercritical CO2-substrate
vaporizes upon its release from pressurization, as Appellant argues, rather
than an aerosol.
However, Sievers teaches that it was known in the prior art that:
“[P]articles free of organic solvents are produced by mixing the organic
solution with a supercritical fluid, such as CO2, in which the organic solvent
is substantially more soluble than is the solute.” Sievers 3. Sievers thus
teaches that organic compounds, including organic salts, can be mixed with
supercritical CO2.
Sievers then expressly teaches that:
We describe herein several variants of a new CO2-assisted
aerosolization process that permits the use of any compound that
is soluble in water, greatly increasing the range of substances that
can be nebulized. This technique provides a means to nebulize
substances such as proteins and inorganic salts, which are
insoluble or only slightly soluble in supercritical CO2 because of
their hydrophilic nature, to form an aerosol with a high number
density of particles with small droplet sizes, ranging typically
from 0.1 to 3 pm in diameter.

Sievers 4 (internal references omitted). Sievers further teaches that:
“The initial expansion of the supercritical CO2 emulsion forms an aerosol
that contains droplets that contain dissolved CO2. This dissolved CO2 is
thought to undergo a subsequent 25-fold expansion, which ruptures the
droplets into extremely fine particles.” Id. Thus, Sievers expressly teaches
aerosols as required by all the rejected claims.
Sievers also teaches that:
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If aerosols, rather than vapors, are formed during decompression
using the super-critical CO2 method, the diameter of the
particles formed is usually smaller than 1 μm…. Furthermore,
the number density of the droplets in the CO2 gas (which can
have O2 or H2O added to facilitate oxidation or hydrolysis) is
much greater than the density of droplets in air from pneumatic
nebulization.

Sievers 11. Sievers thus expressly teaches “mixing a stream of supercritical
CO2 with an aqueous solution of an organic salt in a continuous flow
operation; creating an aerosol from the mixture,” as recited in claim 1.
Furthermore, Sievers also teaches that, in one embodiment, “[t]he
depositions were performed at atmospheric pressure onto glass or quartz
substrates heated at 500–600°C. The flow rate of the aqueous solution was
0.5 mL min-1; the pressure of the CO2 was maintained at 1500 psi.” Sievers
12. Sievers thus also teaches the limitation of claim 1 reciting: “depositing
the aerosol on heated substrates.”
Appellant points to dependent claim 7, which recites, in relevant part:
“wherein the heated substrate is at a temperature of about 80°C to about
150°C,” arguing that Sievers teaches deposition only onto a substrate heated
at 500o–600oC. We do not find this persuasive. Appellant’s Specification
provides no express definition of the claim term “heated surface” and we
therefore give the claim term its “broadest reasonable construction ‘in light
of the specification as it would be interpreted by one of ordinary skill in the
art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
When doing so, however, we are careful not to import limitations from the
Specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
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(Fed. Cir. 1993). Thus, we do not construe the claims as being limited to a
specific “heated” temperature value.
Although Sievers teaches deposition onto a surface heated at 500o–
600oC in one specific embodiment, Sievers also teaches deposition onto
heated surfaces generally. See Sievers Abstr., Fig. 1. Furthermore, Sievers
teaches aerosol deposition of proteins and, in one specific embodiment,
preparation of an enzyme, rhDNase, in an aerosol suitable for deposition on
the alveoli and other bronchial surfaces of the human pulmonary system in
humans with cystic fibrosis. Sievers 9. As explained below, we consider
deposition on pulmonary surfaces to meet the limitation of deposition on a
heated surface.
Human internal body temperature is approximately 37oC. See Body
temperature norms, available at: https://medlineplus.gov/ency/article/
001982.htm (last visited November 27, 2019), which is generally above, and
independent of, ambient temperature. We find that a person of ordinary skill
in the art would therefore reasonably understand the internal tissues of an
endothermic mammal to constitute a “heated surface.” Furthermore, we also
find from the teachings of Sievers that the temperature amplitude of the
heated surface is dependent upon the application desired by the user and the
nature of the substrate to which the aerosol is to be applied. Compare
Sievers 9 (preparation of pulmonary aerosol) with id. at 12 (preparation of
aerosol for deposition on heated glass or quartz).
We therefore conclude that the desired temperature of the substrate to
which the aerosol would be applied would be situation-dependent and, as
such, a result-effective variable. We consequently agree with the
Examiner’s conclusion that a person of ordinary skill in the art would find it
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obvious to optimize the invention of Sievers to the particular temperature of
the heated surface to which it is to be applied. 3 See In re Boesch, 617 F.2d
272, 276 (C.C.P.A. 1980) (holding that “discovery of an optimum value of a
result effective variable … is ordinarily within the skill of the art”).
With respect to Appellant’s argument that a person of ordinary skill in
the art would not have combined the teachings of Chen and Sievers (see
Appeal Br. 15), we do not find this argument persuasive. As we have
explained, we agree with Appellant that Chen does not teach the limitations
that the Examiner relies upon Chen as teaching. However, as we have
further explained, Sievers sufficiently teaches or suggests the disputed
limitations of the claims on appeal. See Final Act. 8–9
Finally, with respect to claims 4, 5, 10, 12, and 14–16, Appellant
argues that neither Mehta, Weber, nor Ford cure the alleged deficiencies of
Chen and Sievers. App. Br. 16. However, Appellant does not argue the
merits of these claims separately from claim 1, discussed above, and, as we
have explained, we conclude that Sievers teaches the limitations of the
claims on appeal, to the extent that they have been argued by Appellant. We
consequently affirm the Examiner’s rejection of claims 1–17.

CONCLUSION
The Examiner’s rejection of claims 1–17 under 35 U.S.C.

3 We also note in passing that Sievers expressly teaches the general use of
proteins in its aerosol applications. See Sievers 4 (“This technique
provides a means to nebulize substances such as proteins and inorganic
salts….”); see also Sievers 9. Deposition of proteins onto temperatures of
500–600oC would necessarily instantly denature such proteins, rendering
them useless for the purposes intended by Sievers.
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§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6–9, 11,
17
103(a) Chen, Sievers

1–3, 6–9,
11, 17

4, 5 103(a) Chen, Sievers,
Mehta
4, 5
10, 12, 13,
15, 16
103(a) Chen, Sievers,
Weber
10, 12, 13,
15, 16

14 103(a) Chen, Sievers,
Ford
14
Overall
Outcome
1–17