The Research Foundation for The State University of New York

Patent Trials and Appeals BoardAug 25, 2021

2020004119 (P.T.A.B. Aug. 25, 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. 13/632,674 10/01/2012 Sarbajit Banerjee 011520.01005 2189 26712 7590 08/25/2021 HODGSON RUSS LLP THE GUARANTY BUILDING 140 PEARL STREET SUITE 100 BUFFALO, NY 14202-4040 EXAMINER PATEL, RONAK C ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 08/25/2021 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): ipdocketing@hodgsonruss.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SARBAJIT BANERJEE, LUISA WHITTAKER-BROOKS, CHRISTOPHER J. PATRIDGE, and PETER MARLEY Appeal 2020-004119 Application 13/632,674 Technology Center 1700 Before BRIAN D. RANGE, LILAN REN, and JANE E. INGLESE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 3–7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as The Research Foundation for the State University of New York. Appeal Br. 2. Appeal 2020-004119 Application 13/632,674 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to doped nanoparticles having a desirable metal-insulator phase transition temperature. Spec. ¶ 3. The material might be used, for example, as a “smart window” coating that switches between infrared transmitting and infrared reflective as a function of external temperature. Id. ¶ 5. Claim 1 is illustrative: 1. A VO2 nanoparticle doped with a plurality of metal cations selected from the group consisting of K cations, Na cations, Cs cations, Sr cations, Ba cations, Ca cations,W cations, Mo cations, Ag cations, Pb cations Nb cations, Cr cations, Al cations, Fe cations, Ti cations, Zr cations, Ta cations, Sc cations, Ga cations, Cu cations, Co cations, Ni cations, rare-earth element cations, and combinations thereof, wherein the dopant is present in the nanoparticle at 0.1 to 10 % by weight, wherein the dopants do not segregate into distinct phases and the dopants are substitutionally incorporated within a VO2 structure such that they replace vanadium atoms in the VO2 structure; and wherein the nanoparticle exhibits a metal-insulator transition at a temperature of from -200 °C to 350 °C. REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Sutorik et al. (“Sutorik”) US 2005/0227864 A1 Oct. 13, 2005 Yu et al. (“Yu”) US 2006/0131574 A1 June 22, 2006 2 In this Decision, we refer to the Final Office Action dated March 25, 2019 (“Final Act.”), the Appeal Brief filed November 25, 2019 (“Appeal Br.”), the Examiner’s Answer dated March 13, 2020 (“Ans.”), and the Reply Brief filed May 13, 2020 (“Reply Br.”). Appeal 2020-004119 Application 13/632,674 3 Bujard et al. (“Bujard”) US 2007/0259182 A1 Nov. 8, 2007 Ribi US 2007/0273951 A1 Nov. 29, 2007 Samuel et al. (“Samuel”) US 2009/0321660 A1 Dec. 31, 2009 Lukehart et al. (“Lukehart”) US 2011/0085964 A1 Apr. 14, 2011 Buller et al. (“Buller”) US 2011/0146785 A1 June 23, 2011 Ozin et al. (“Ozin”) US 2013/0168228 A1 July 4, 2013 REJECTIONS The Examiner maintains the following rejections on appeal: A. Claims 1 and 5 under 35 U.S.C. § 103 as obvious over Samuel in view of Sutorik and Ribi. Final Act. 2. B. Claim 3 under 35 U.S.C. § 103 as obvious over Samuel in view of Sutorik and Ribi in further view of Yu or Ozin. Id. at 4. C. Claim 4 under 35 U.S.C. § 103 as obvious over Samuel in view of Sutorik and Ribi in further view of Lukehart. Id. at 5. D. Claim 6 under 35 U.S.C. § 103 as obvious over Samuel in view of Sutorik and Ribi in further view of Buller. Id. at 6. E. Claim 7 under 35 U.S.C. § 103 as obvious over Samuel in view of Sutorik and Ribi in further view of Bujard. Id. OPINION The Examiner has the initial burden of establishing a prima facie case of obviousness 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 Appeal 2020-004119 Application 13/632,674 4 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. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). A reasonable expectation of success is a necessary part of a prima facie case of obviousness. In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991); see also KSR, 550 U.S. at 417 (“a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions” (emphasis added)). Whether or not a person of ordinary skill in the art would have had a reasonable expectation that a particular combination of references would work is a question of fact. Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006). To resolve the issues before us on appeal, we focus on the Examiner’s findings and determinations that relate to the error Appellant identifies. Because we decide this appeal based on a recitation in independent claim 1, we focus our analysis on claim 1. This analysis is equally applicable to all of the dependent claims. The Examiner finds that Samuels teaches, for example, vanadium oxide doped with europium. Final Act. 2 (citing Samuels). The Examiner does not dispute Appellant’s position that vanadium oxide could refer to species other than claim 1’s recited vanadium dioxide (VO2). Ans. 17. Vanadium oxide can refer, for example, to VO2, V2O5, V2O3, or VO. Id. The Examiner finds that Sutorik teaches using a dopant in an amount that does not phase segregate to form a separate phase. Final Act. 3 (citing Sutorik). The Examiner determines that it would have been obvious to incorporate this Appeal 2020-004119 Application 13/632,674 5 teaching of Sutorik into Samuel “to have high strength and toughness.” Id. The Examiner finds that Ribi teaches color change materials including vanadium dioxide. Id. (citing Ribi). The Examiner determines that it would have been obvious to use Ribi’s vanadium dioxide as the vanadium oxide of Samuel “to have desired color change, levels or color hue change and stability.” Id. Appellant argues that a person of skill in the art would not have combined the references’ teachings because there would not have been a reasonable expectation of success. Appeal Br. 12. Appellant’s argument persuades us of error. The Examiner provides evidence of a reason why a person of skill in the art would have substituted vanadium dioxide for other vanadium oxides of the combined Samuels and Sutorik process, but the Examiner does not adequately establish, based on all evidence before us, that a person of skill in the art would have reasonably had an expectation of success in accomplishing this substitution. See, e.g., Ans. 21–22. In particular, the preponderance of evidence before us indicates that at least the Sutorik process would result in V2O5 particles rather than claim 1’s vanadium dioxide particles. See January 6, 2017, Declaration of Dr. Sarbajit Banerjee. The Examiner does not persuasively rebut this evidence and does not, for example, identify what process a person of skill in the art would have known to employ to reach the subject matter of claim 1. The Examiner relies on the Manual of Patent Examining Procedure’s explanation of when a reference is presumed operable. Ans. 22. The MPEP states: When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is Appeal 2020-004119 Application 13/632,674 6 found, the burden is on applicant to rebut the presumption of operability. MPEP § 2121(I). The present scenario is distinguishable from what the MPEP contemplates in the above passage because none of the references individually teach claim 1’s nanoparticle and because the Examiner has not established that a person of skill in the art would have reasonably expected success in creating claim 1’s nanoparticle based on the references’ combined teachings.3 Moreover, as explained above, Appellant presented persuasive evidence that at least one of the references’ processes (Sutorik) will not lead to the nanoparticle of claim 1. The Examiner’s treatment of the dependent claims including the Examiner’s use of additional references for the dependent claims does not cure the error we identify above. We, thus, do not sustain the Examiner’s rejections. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5 103 Samuel, Sutorik, Ribi 1, 5 3 103 Samuel, Sutorik, Ribi, Yu, Ozin 3 4 103 Samuel, Sutorik, Ribi, Lukehart 4 6 103 Samuel, Sutorik, Ribi, Buller 6 3 Although the Examiner’s citation relates, strictly speaking, to enablement of references rather than expectation of success, we address the citation here because the issues are related in the present context. Appeal 2020-004119 Application 13/632,674 7 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7 103 Samuel, Sutorik, Ribi, Bujard 7 Overall Outcome 1, 3–7 REVERSED