The Boeing Company

Patent Trials and Appeals Board

Mar 29, 2021

2020003111 (P.T.A.B. Mar. 29, 2021)

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.
14/503,201 09/30/2014 Morteza Safai 14-1128-US-NP (BOE.314) 6000
120792 7590 03/29/2021
Kolisch Hartwell, P.C.
Boeing Customer Number
520 SW Yamhill Street, Suite 300
Portland, OR 97204
EXAMINER
JACKSON, MONIQUE R
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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):
docketing@khpatent.com
patentadmin@boeing.com
veronica@khpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MORTEZA SAFAI
Appeal 2020-003111
Application 14/503,201
Technology Center 1700
Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
DONNA M. PRAISS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents:
Specification filed September 30, 2014 (“Spec.”); Non-Final Office Action
mailed March 19, 2019 (“Non-Final Act.”); Appeal Brief filed September
18, 2019 (“Appeal Br.”); Examiner’s Answer mailed January 22, 2020
(“Ans.”), and Reply Brief filed March 20, 2020 (“Reply Br.”).
Appeal 2020-003111
Application 14/503,201

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 7–15 and 21.3 See Appeal Br. 16. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellant states the invention provides prepreg compositions
including a plurality of core/shell quantum dots on or in the resin matrix, and
determination of their suitability for use in composite structures. Spec. 2,
ll. 2–8. Claim 7, the only independent claim on appeal and reproduced
below, is illustrative of the claimed subject matter (Appeal Br., Claims
Appendix 48):
7. A prepreg composition comprising:
a bed of fibers disposed in a resin matrix; and
a plurality of core/shell quantum dots disposed within the
resin matrix;
wherein the plurality of core/shell quantum dots is
configured to exhibit an increase in detectable luminescence
when exposed to an amount of UV radiation correlating to an
amount of UV radiation sufficient to render the prepreg
composition unsuitable for use in fabricating composite
structures.

2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as The Boeing
Company. Appeal Br. 4.
3 Claims 1, 3–6, and 16–20 have been withdrawn from consideration and
claim 2 has been canceled. Non-Final Act. 1; Appeal Br., Claims Appendix
47–52.
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Application 14/503,201

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REJECTIONS4
1. Claims 7–15 and 21 are rejected under 35 U.S.C. § 112(a) for
failing to comply with the enablement requirement.
2. Claims 7–15 and 21 are rejected under 35 U.S.C. § 112(b) as
being indefinite.
OPINION
Rejection 1
We confine our discussion to claim 7, which is sufficient for
disposition of this rejection.

The Examiner’s Rejection
In rejecting claim 7 as failing to comply with the enablement
requirement, the Examiner determined undue experimentation would be
required in order to make a prepreg composition including wherein a
“plurality of core/shell quantum dots is configured to exhibit an increase in
detectable luminescence when exposed to an amount of UV radiation
correlating to an amount of UV radiation sufficient to render the prepreg
composition unsuitable for use in fabricating composite structures” as
recited in the claim. Ans. 3. In particular, the Examiner determined that,
given the breadth of the claims, the dependence on various parameters
effecting the performance of the quantum dots, which is unpredictable, and
the lack of working examples and guidance in the Specification as to how to
select from a large number of core/shell quantum dots, resin matrix, and

4 The Examiner withdrew all of the rejections of the claims based on prior
art in the Answer. Ans. 10–11.
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Application 14/503,201

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fiber materials, undue experimentation would be required to make and use
the claimed invention. Id. at 3–7. The Examiner further explained that the
identification of the desired spectral properties for the recited core/shell
quantum dot would require undue experimentation because the claims do not
recite any specific spectral properties for the recited core/shell quantum dots,
and because the interactions between the core/shell quantum dots and the
other unspecified components of the prepreg composition are unpredictable.
Id. at 13–14.

Appellant’s Arguments
Appellant argues that the Examiner has focused improperly on the
quantum dot component of the claimed invention, which is a well-known
and well-understood technology. Appeal Br. 27–29, citing prior art of
record. Appellant contends the Declaration of the inventor Morteza Safai
filed November 20, 2018 (“the Safai Declaration”) asserts that once the
particular spectral properties that are desired for the quantum dots have been
identified, a person of ordinary skill in the art could have readily made and
used the described quantum dots without undue experimentation. Id. at 30;
Safai Decl. ¶¶ 8–10. Appellant also argues the effect of UV light exposure
on uncured resin-based composite materials is well understood as is the
relationship between quantum dot characteristics and spectral properties of
the resulting quantum dots. Reply Br. 5–6.

Issue
Did the Examiner err in determining that one of ordinary skill in the
art would not have been able to make a composition “wherein the plurality
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of core/shell quantum dots is configured to exhibit an increase in detectable
luminescence when exposed to an amount of UV radiation correlating to an
amount of UV radiation sufficient to render the prepreg composition
unsuitable for use in fabricating composite structures” as recited in claim 7
without undue experimentation?

Discussion
“To satisfy the enablement requirement of § 112, ¶ 1, a patent
application must adequately disclose the claimed invention so as to enable a
person skilled in the art to practice the invention at the time the application
was filed without undue experimentation.” In re Swartz, 232 F.3d 862, 863
(Fed. Cir. 2000) (citation omitted).
To determine whether the necessary experimentation is undue, we
look at factors including “(1) the quantity of experimentation necessary, (2)
the amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.” In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
We are persuaded by Appellant’s arguments.
The Specification discloses that the outer shell of a core/shell quantum
dot “may be configured to substantially block light of [a] first wavelength
from reaching the inner core when the outer shell is intact.” Spec. 2, ll. 11–
12. The Specification discloses that the outer shell may be configured such
that when exposed to a “threshold amount of UV radiation,” the outer shell
is subject to “sufficient degradation” to allow the inner core to emit a
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detectable luminescent signal when the quantum dot is illuminated by light
having a first wavelength. Id. at 2, ll. 12–16. The Specification discloses
the “threshold amount of UV radiation is that amount that is sufficient to
render the prepreg composition unsuitable for use in fabricating composite
structures.” Id. at 2, ll. 16–18; see also id. at 6, ll. 3–29. The Specification
further discloses that “quantum dots can be tuned during manufacturing to
emit any color of light by altering the size and/or composition of the
nanoparticles.” Id. at 5, ll. 11–13. The Specification discloses “[i]n one
illustrative embodiment, the absorbance spectrum of the outer shell 14 is
configured to at least partially match the absorbance spectrum of a resin
used in manufacturing prepreg compositions, particularly in or near the UV
region.” Id. at 6, l. 29 – 7, l. 2. The Specification discloses illustrative
core/shell quantum dots and also discloses that “[m]ethods of synthesizing,
characterizing, and modifying the optical properties of quantum dots have
been well described.” Id. at 7, ll. 25–29, citing Dabbousi et al., J. Phys.
Chem. B 1997, 101, 9463–9475; van Embden et al., Langmuir, 2005 21,
10226–10233). The Specification discloses also a method of obtaining a
benchmark luminescence emission, in order to determine a threshold amount
of UV radiation sufficient to render a prepreg composition unsuitable for use
in fabricating a composite structure, which may be used to expose a sample
of core/shell quantum dots in order to establish a benchmark luminescence.
Id. at 14, l. 25 – 15, l. 14, Fig. 8.
The Safai Declaration states “[u]nlike all previous quantum dot
formulations, which have been employed as bright luminescent labels, the
quantum dots of the ’201 application are initially substantially non-
luminescent at the second wavelength when illuminated at the first
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wavelength, but then become luminescent after UV exposure. These
quantum dots have not previously been described.” Safai Decl. ¶ 8. The
Safai Declaration states core-shell quantum dots have been extensively
studied, including the effect of core and shell composition and size on the
spectral properties of the resulting quantum dot. Id. at ¶ 9. As a result, the
Safai Declaration states that once the desired spectral properties for the
quantum dot are identified, one of ordinary skill in the art could readily
make and use the described quantum dots with routine
experimentation/optimization. Id. at ¶ 10.
Both the Examiner and Appellant cite to prior art of record to further
support their positions. See Ans. 5; Appeal Br. 27–28; Safai Decl. ¶ 9. In
this regard, the Examiner states “the Examiner is again not disputing the fact
that core/shell quantum dots are known in the art [or] that one skilled in the
art would be able to make a core/shell quantum dot that has specific spectral
properties.” Ans. 14; Reply Br. 6. Accordingly, the ability of the ordinary
skilled artisan to make quantum dots having specific spectral properties is
not in dispute.
We observe that the prior art provides support for Appellant’s position
that given the general direction provided in the Specification, one of
ordinary skill in the art would have been able to select appropriate quantum
dots configured as set forth in claim 7. That is, Appellant cites to Davis ’858
(U.S. Patent 7,955,858 issued June 11, 2011), which discloses quantum dots
as indicators, where the quantum dot is “configured to emit a second light
having a second wavelength when illuminated by a first light having a first
wavelength, and a shell surrounding the quantum dot.” Davis ’858, col. 2, ll.
33–36; Appeal Br. 28; see Non-Final Act. 14. Davis ’858 discloses “[t]he
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shell is formed of a material that reflects the first light and reacts in the
presence of a predetermined condition to allow the first light to illuminate
the quantum dot.” Id. at col. 2, ll. 36–39. Further, Trinchi (Trinchi et al.
Distributed quantum dot sensors for monitoring the integrity of protective
aerospace coatings) discloses UV exposure influences the stability of
quantum dots. Trinchi 2, col. 1. Appeal Br. 28; see Non-Final Act. 16.
Thus, one of ordinary skill in the art is familiar with the concept of selecting
shells of quantum dots that are sensitive to a predetermined condition to
provide indicating properties, and that quantum dots are sensitive to UV
exposure.
Although the Examiner indicates that quantum dots are susceptible to
possible surface defects, photodegradation, photo-annealing effects, and
other issues related to incorporation into a resin matrix (Ans. 5–6), there is
extensive discussion in the prior art cited by the Examiner as to how to
address such issues. Eg. Banin et al. US 2003/0010987 A1, published
January 16, 2003, ¶¶ 18, 68–69, 71, 136–138; Bartel US 2010/0308271 A1,
published December 9, 2010, ¶¶ 36, 40, 84, 88; Alivisatos US 2005/0054004
A1, published March 10, 2005, ¶¶ 10, 106, 108, 111. Thus, we agree with
Appellant that addressing such issues would fall into the realm of routine
experimentation. In re Wands, 858 F.2d at 737 (“a considerable amount of
experimentation is permissible, if it is merely routine, or if the specification
in question provides a reasonable amount of guidance with respect to the
direction in which the experimentation should proceed.” (citing In re
Angstadt, 537 F.2d 498, 502–04 (CCPA 1976)).
Accordingly, we are of the view that the guidance in the Specification
discussed above along with the knowledge of one of ordinary skill in the art
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as evidenced by the prior art of record is sufficient to provide enablement for
claim 7. As a result, we reverse the Examiner’s rejection of claims 7–15,
and 21 as lacking enablement.

Rejection 2
We confine our discussion to claim 7, which is sufficient for
disposition of this rejection.

The Examiner’s Rejection
In rejecting claim 7 as being indefinite, the Examiner determined the
recitation “wherein the plurality of core/shell quantum dots is configured to
exhibit an increase in detectable luminescence when exposed to an amount
of UV radiation correlating to an amount of UV radiation sufficient to render
the prepreg composition unsuitable for use in fabricating composite
structures” renders the claim indefinite, because one of ordinary skill in the
art would not be reasonably apprised of the scope of the claimed invention
and could not interpret the metes and bounds of the claim so as to
understand how to avoid infringement. Ans. 7–8. The Examiner determined
the phrase “configured to . . . when” is indefinite because it is unclear
whether the limitations contained in the phrase are part of the claims or are
meant to encompass an intended use that may or may not take place. Id. at
8. The Examiner determined whether an increase in luminescence is
detectable is relative and based on the method of detection such that
identical compositions may provide different results. Id. The Examiner
determined also that whether a composition is suitable or unsuitable for use
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depends on a variety of subjective determinations not clearly defined in the
Specification, which renders the claim indefinite. Ans. 9–10.

Appellant’s Arguments
Appellant argues that the phrase in question is a functional limitation,
which would be well-understood by a person of ordinary skill in the art, who
would be able to evaluate whether a prepreg material fell within or outside
the bounds of the claim. Appeal Br. 31–32. Appellant contends one of
ordinary skill in the art would be able to determine the amount of UV
radiation that would render a prepreg composition unsuitable for use in
fabricating composite structures. Id. at 32–34. Appellant argues also the
breadth of a claim should not be equated with indefiniteness. Reply Br. 8–9.

Issue
Did the Examiner err in determining that the phrase “wherein the
plurality of core/shell quantum dots is configured to exhibit an increase in
detectable luminescence when exposed to an amount of UV radiation
correlating to an amount of UV radiation sufficient to render the prepreg
composition unsuitable for use in fabricating composite structures” recited in
claim 7 renders the claim indefinite?

Discussion
During examination, “[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307,
1310, 1314 (Fed. Cir. 2014 (per curiam) (citing Manual of Patent
Examining Procedure § 2173.05).
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We are persuaded by Appellant’s arguments. That is, we agree with
Appellant that for a particular prepreg formulation, a person of ordinary skill
in the art would need to determine particular quantum dots that, when
exposed to sufficient UV radiation to render the prepreg formulation
unsuitable for use, would exhibit an increase in detectable luminescence.
Reply Br. 9. As discussed above, the Specification provides sufficient
guidance in the form of an example method on how to determine such
conditions. See also Spec. 10, ll. 7–13 (discussing detectable luminescence),
12, l. 3 – 13, l. 20 (discussing methods to evaluate whether a prepreg
material is suitable for use). Thus, although claim 7 does not recite specific
components for the prepreg composition, such is an indication of the breadth
of the claim, rather than the claim being indefinite. In re Miller, 441 F.2d
689, 693 (CCPA 1971) (“breadth is not to be equated with
indefiniteness”); In re Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth
is not indefiniteness.”)
As a result, we reverse the Examiner’s rejection of claims 7–15, and
21 as indefinite.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7–15, 21 112(a) Enablement 7–15, 21
7–15, 21 112(b) Indefiniteness 7–15, 21
Overall
Outcome
7–15, 21

REVERSED