Ex Parte 6861155 et al

Patent Trial and Appeal Board

May 31, 2013

95001268 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,268 11/19/2009 6861155 038-0004RX 3705
27890 7590 05/31/2013
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/31/2013 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

____________

NANOCO TECHNOLOGIES, LTD.
Requester and Cross-Appellant and Respondent

v.

MASSACHUSETTS INSTITUTE OF TECHNOLOGY
Patent Owner and Appellant and Cross-Respondent
____________

Appeal 2013-000713
Reexamination Control 95/001,268
Patent 6,861,155 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON,
and RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Patent Owner from the Patent Examiner’s
decision to reject pending claims in an inter partes reexamination of U.S. Patent
6,861,155. This is also a decision on an appeal by the Third-Party Requester from
the Patent Examiner’s decision not to adopt proposed rejections of the claims. The
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Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We
affirm-in-part.
I. BACKGROUND
The patent in dispute in this appeal is U.S. Patent 6,861,155 B2 (hereinafter,
“the ‘155 Patent”), which issued March 1, 2005. The claims are drawn to
monodisperse nanocrystals, where each nanocrystal has a semiconductor core and
an overcoating deposited on the core. The nanocrystals emit light at a controlled
peak wavelength of light. The nanocrystals have applications in optoelectronics,
e.g., in light emitting devices and optical switches (Danek,1 p. 714).
A request for inter partes reexamination under 35 U.S.C. §§ 311-318 and 37
C.F.R. §§ 1.902-1.997 for the ‘155 patent was filed November 19, 2009 by a
Third-Party Requester (Request for Inter Partes Reexamination). The Third-Party
Requester is Nanoco Technologies (Requester Appeal Br. 4, dated April 17, 2012).
The Patent Owner is the Massachusetts Institute of Technology (Patent Owner
Appeal Br. 1, dated May 18, 2012). Claims 1-51, 60-84, 86, 87, 94-97, 151 and
152 are pending and stand rejected. An oral hearing was held January 25, 2013. A
transcript of the hearing will be entered into the record in due course.
The instant 95/001,268 Reexamination is related to Reexamination
95/001,298 of US 7,125,605 B2 (“the ‘605 patent”), issued October 24, 2006. The
‘605 patent is a continuation of the ‘155 patent (see “Related U.S. Application
data” listed in the ‘605 patent).

1 Danek, M., Jensen, K.G., Murray, C.B., and Bawendi, M.G., Preparation of II-VI
quantum dot composites by electrospray organometallic chemical vapor
deposition, 145 Journal of Crystal Growth 714-720 (1994).
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IA. Appeal by Patent Owner
Patent Owner appeals the Examiner’s decision to reject the claims under 35
U.S.C. § 102 and § 103. The grounds of rejection are numbered 1-10 herein.

IB. Appeal by Requester
Requester appeals the Examiner’s decision not to maintain rejections under
35 U.S.C. § 102 and § 103 involving the Kuno2 and Danek publications (Requester
Appeal Br. 5-6).
IC. Claim 1
Claim 1 is representative and reads as follows:
1. A monodisperse population of nanocrystals comprising:
a plurality of nanocrystal particles, wherein each particle
includes a core including a first semiconductor material and an
overcoating including a second semiconductor material deposited on
the core,
wherein the first semiconductor material and the second
semiconductor material are different,
wherein the monodisperse population emits light in a spectral
range of no greater than about 60 nm full width at half max (FWHM)
when irradiated,
wherein the monodisperse population exhibits
photoluminescence having a quantum yield of greater than 15 %, and
wherein the monodisperse population emits light at a controlled
peak wavelength of light emission.

2 Kuno, M., Lee, J.K., Dabbousi, B., Mikulec, F., and Bawendi, M., The band edge
luminescence of surface modified CdSe nanocrystallites: Probing the luminescing
state, 106(23) J. Chem. Phys. 9869-9882 (1997).
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II. APPEAL BY PATENT OWNER

1. ANTICIPATION BY HINES
Claims 1, 2, 4-16, 18-34, 36-42, 60, 61, 70, 72, 73, 94 and 96 stand rejected
as anticipated under 35 U.S.C. § 102(b) over Hines3 (RAN 21).

Claim 1
Claim 1 is drawn to a “monodisperse population of nanocrystals”
comprising “a plurality of nanocrystal particles, wherein each particle includes a
core including a first semiconductor material and an overcoating including a
second semiconductor material deposited on the core.” The monodisperse
population “emits light at a controlled peak wavelength of light emission.”
(Emphasis added.)
The Examiner found that Hines describes ZnS-capped (the “overcoating . . .
second semiconductor material”) CdSe nanocrystals (the “core . . . first
semiconductor material”) which meet all the limitations of the claims (RAN 23-
26). The Examiner contends that the “[t]he term 'controlled' as it appears in
product claims…is a product-by-process limitation” (RAN at 57). Based on the
product-by-process interpretation, the Examiner found that “Patent Owner’s
arguments that Hines does not teach adjusting, desiring, or choosing the peak
wavelength of light emission are unavailing. It’s the claimed properties and
characteristics of the nanocrystal particles that must be compared.” (RAN at 58.)

3 Hines, M. and Guyot-Sionnest, P., Synthesis and Characterization of Strongly
Luminescing ZnS-Capped CdSe Nanocrystals, 100 J. Phys. Chem 468-471 (1996).
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Patent Owner contends that Hines does not teach nanocrystals that emit light
at a controlled peak wavelength of light emission (Patent Owner Appeal Br. 12).
Patent Owner argues that, “[f]or a given composition, the size alone is the primary
factor in controlling color.” (Id. at 13.) “The peak wavelength of light emission, or
color, of a nanocrystal is determined primarily by the size and composition of the
nanocrystal” (id.). Thus, Patent Owner states “there is a clear relationship between
size and peak wavelength of light emission. Size is undoubtedly a structural
property of a nanocrystal. This inextricable relationship between the size and peak
wavelength of light emission of a nanocrystal means that ‘controlled peak
wavelength of light emission’ is not a product-by-process limitation” (id.). Patent
Owner contends that the claim term “controlled” requires that a choice of a core
size/emission wavelength was made, and that no such choice was made in Hines
(id. at 14). This first issue to address is therefore the proper interpretation of the
phrase “controlled peak wavelength of light emission.”

Claim interpretation
The ‘155 Patent does not provide a definition of “controlled peak
wavelength of light emission.” However, as argued by Patent Owner, the patent
teaches that the wavelength of emitted light is a function of the size of the
nanocrystal (‘155 Patent, col. 4, ll. 21-25). The patent teaches that the particle size
may be monitored during their synthesis “to provide a coated quantum dot of
narrow particle size distribution, high spectral purity and high quantum efficiency”
(id. at col. 4, ll. 39-41). The patent describes how to control the size and size
distribution of the nanocrystals (id. at col. 4, l. 44 to col. 6, l. 67). According to the
patent, the procedure for synthesizing the nanocrystals “produces overcoated
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quantum dots with a range of core and shell sizes. Significantly, the method of the
invention allows both the size distribution of the nanocrystallites and the thickness
of the overcoating to be independently controlled.” (Id. at col. 7, ll. 23-27). Figure
1 shows that that dots with different sized diameters have different absorption
spectra, a reflection of the size of the nanoparticle (id. at col. 3, ll. 55-59; col. 7, ll.
27-37). The process is said by the patent to address the “need for semiconductor
nanocrystallites capable of light emission with high quantum efficiencies
throughout the visible spectrum, which possess a narrow particle size (and hence
with narrow photoluminescence spectral range).” (Id. at col. 2, ll. 41-45.) (“This
invention relates to luminescent nanocrystalline materials which emit visible light
over a very narrow range of wavelengths.” Id. at col. 1, ll. 23-25.)
Based on this disclosure, a person of ordinary skill in the art would
understand that “controlled” indicates that the nanocrystals have a particular size
which was produced by the particular process through which they are made. The
size is associated with a “peak wavelength of light emission.” Thus, a “controlled
peak wavelength of light emission,” when read in light of the specification
disclosure discussed above, would be reasonably interpreted to mean that the
nanocrystal synthesis was such that the nanocrystals have a specific and
characteristic wavelength of light, e.g., a wavelength of light with narrow range of
emission. It is important to note that neither the claims nor the Specification are
limited to any particular process for making nanocrystals or any particular peak
wavelength.

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Analysis
The Examiner found that Hines describes a monodisperse population with a
specific and narrow range of light emission (RAN 24: 1-7), satisfying the
“controlled” peak wavelength limitation of the claims as we have reasonably
interpreted it in view of the ‘155 Patent Specification. Patent Owner argues that
the Examiner erred in this finding:
The ‘155 patent explains that Hines “does not allow control of the
particle size obtained from the process and hence does not allow
control of color.” Col. 2, lines 28-31 (emphasis added). Indeed,
Hines does not describe preparing a population of core
nanocrystals by choosing reactions conditions expected
to produce coated nanocrystals having a controlled,
adjusted, desired, or chosen maximum wavelength of
light emission. Hines therefore does not describe cores of
a controlled size . . . Because Hines only describes one
population of nanocrystals having a core size and
maximum wavelength of light emission that happened to
result under the particular conditions for the particular
population described, Hines does not describe
nanocrystals having a controlled maximum wavelength
of light emission.
Second Murray Decl. at ¶¶ 15-17.
(Patent Owner Appeal Br. 14.) The Murray Declaration (“Second Murray Decl.”)
referenced by Patent Owner is testimony by Dr. Christopher B. Murray who was a
professor of Chemistry and Materials Science and Engineering at the University of
Pennsylvania at the time his declaration was executed (Second Murray Declaration
¶ 2, dated May 20, 2011). Dr. Murray was a student in the Department of
Chemistry at the Massachusetts Institute of Technology and graduated with a Ph.
D. in physical chemistry in 1995 (id. at ¶ 3). Moungi G. Bawendi was the faculty
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supervisor of his research (id.). Dr. Bawendi is a co-inventor of the ‘155 Patent
and MIT is the Patent Owner.
Patent Owner contends that the term “controlled” requires “choosing
reactions conditions expected to produce coated nanocrystals having a controlled,
adjusted, desired, or chosen maximum wavelength of light emission.” In other
words, Patent Owner interprets the term “controlled” to impart an additional step
that must be performed in order to carry out the claimed method, which Patent
Owner argues, is not disclosed by Hines.
As explained above, “controlled” indicates that a particular process was
carried out to produce a population of nanoparticles with a specific size and
wavelength. Hines also describes carrying out a process under specific conditions
in order to obtain a monodisperse population of nanocrystals with a narrow size
distribution and wavelength (Hines, p. 469, col. 2, “Results and Discussion”; p.
470, Figure 3). In fact, Hines chose conditions to produce a nanoparticle of a
specific size. There is no requirement that Hines made more than one choice.
Thus, the nanocrystals disclosed by Hines have a “controlled peak wavelength.”
Patent Owner has not provided evidence that “choosing reaction conditions” makes
the product of the claims any different than the product taught by Hines.
For the foregoing reasons, the rejection of claim 1 as anticipated by Hines is
affirmed. Claims 2, 4-7, 9-16, 18-34, 36-42, 60, 61, 72, 73, 94 and 96 were not
argued separately and fall with claim 1.

Claim 8
Claim 8 depends on claims 1 and 7 and further recites that “the cores of the
plurality of nanocrystal particles have diameters having no greater than 5 % rms
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deviation.” The Examiner finds that such a distribution is described by Hines. The
Examiner cites the following disclosure in Hines to support this finding:
We describe the synthesis of ZnS-capped CdSe semiconductor
nanocrystals using organometallic reagents by a two-step single-flask
method. X-ray photoelectron spectroscopy, transmission electron
microscopy and optical absorption are consistent with nanocrystals
containing a core of nearly monodisperse CdSe of 27-30 Å diameter
with a ZnS capping 6 ± 3 Å thick.
(Hines, p. 468, Abstract.)
Since changes in the amount injected and temperature of TOPO
produces variations in the final CdSe-size, the conditions described in
the previous section apply to the reproducible synthesis of rather
monodisperse nanocrystals between 27 and 30 Å as shown in their
absorption spectrum in their Figure 1.
(Hines, p.469, col. 1, “Results and Discussion”)
Based on the evidence of Hines' disclosure of monodisperse nanocrystals
between 27 and 30 Å, the Examiner calculated that the width of the size
distribution is ± 1.5 Å around a median of 28.5 Å (RAN 66). “This correlates to
only ±5% deviation from the median of 28.5 Å (i.e., 1.5/28.5 = 0.05). A
distribution of ± 1.5 Å (or ±5%) has a standard deviation (which is essentially the
same as the rms deviation) less than ± 1.5 Å (or ±5%)” (id.)
Patent Owner contends that the Examiner erred in finding claim 8
anticipated by Hines.
First, Patent Owner argues that the disclosure of “27-30 Å” in Hines (at p.
469, col. 1) is ambiguous and does not justify the inference that the width of the
distribution is only± 1.5 Å around a median of 28.5 Å (Patent Owner Appeal Br.
15).
Second, Patent Owner states that even “if the distribution is assumed to be ±
1.5 Å, 1.5 divided by 28.5 is not 0.05, as the Examiner states, but is 0.0526. The
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correct value of 0.0526 is greater than the claimed value of ‘no greater than 5%.’”
(Patent Owner Appeal Br. 15.)
The issue is thus whether Hines would be understood by one of ordinary
skill in the art to describe the claimed monodisperse population in which “the cores
of the plurality of nanocrystal particles have diameters having no greater than 5%
rms deviation.” (Claim 8.)

Analysis
Hines expressly teaches that its method permitted the “reproducible
synthesis of rather monodisperse nanocrystals between 27 and 30 Å as shown in
their absorption spectrum in their Figure 1.” (Hines, p. 469, col. 1.) A declaration
by Dr. Philippe Guyot-Sionnest, co-author of the Hines publication and the faculty
supervisor of Margaret Hine’s graduate research – the first author of the Hines
publication – testified about how the 27-30 Å range was obtained.
According to Dr. Guyot-Sionnest, the value was obtained from Figure 3 of
the Murray4 paper which shows a series of absorption spectra for CdSe crystals of
different sizes. Dr. Guyot-Sionnest acknowledged that the Hines publication
erroneously referred to “Figure 1” of Murray for this calculation, rather than Figure
3. Dr. Guyot-Sionnest stated that the center of the distribution of cores size
diameters was extracted from Figure 3 of Murray, but the “range in the size
distribution” was “estimated at 10% of the average based on the information
provided in the Murray paper.” (Guyot-Sionnest Declaration ¶ 9.) A “range” of

4 Murray, C.B., Norris, D.J., and Bawendi, M.G., Synthesis and Characterization
of Nearly Monodisperse CdE (E = S, Se, Te) Semiconductor Nanocrystallites, 115
J. Am. Chem. Soc. 8706-8715 (1993). (“Murray 1993”)
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10% would mean the deviation around a median, in other words, the ±5% found by
the Examiner.
Dr. Guyot-Sionnest testified that Hines used this 10% estimate as “the basis
for the statements in the Hines paper that refer to ‘nanocrystals containing a core of
nearly monodisperse CdSe 27-30 Å in diameter" (at Abstract) and “rather
monodisperse nanocrystals between 27 and 30 Å” (at p. 469, col. 1. sixth
paragraph). (Id.) Thus, Dr. Guyot-Sionnest’s testimony supports the Examiner’s
calculation that the deviation of the core diameter is from 27-30 Å or ±1.5/28.5 =
0.0526 or ±5%.
Patent Owner concurs with Dr. Guyot-Sionnest that the peak of the spectrum
can be estimated from Figure 3 of Murray, but disagrees about the estimation of
the size distribution. According to a Declaration by Dr. Christopher B. Murray,
author of the 1993 Murray paper cited by Dr. Guyot-Sionnest, the 10% value
discussed in the Guyot-Sionnest declaration is a reference to another passage in the
Murray 1993 paper describing a range of 20% or ±10%. (Second Murray Decl. ¶
48.)
It is true that Murray 1993 contains a disclosure of a ± 10% distribution – a
total range of 20% – but Dr. Guyot-Sionnest plainly refers to the sample having “a
range in the size distribution, estimated at 10% of the average” (Guyot-Sionnest
Decl. ¶ 9). Dr. Murray did not deny that his Murray 1993 paper also refers to a
total range of 10% based on a deviation of ±5%. Murray 1993 explicitly states: “A
final size-selective precipitation from l-butanol yields a sample with optical
absorption d and with an average size of [ ] 37 Å ± 5%.” (Murray 1993, p. 8708,
2nd column, 2nd full paragraph). However, Dr. Murray takes the position that the
10% range does not apply to Hines because Hines did not perform a size selection
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step and the ten percent in Murray was obtained only after a step of “final size-
selective precipitation.” (Second Murray Decl. ¶ 48.)
We credit the testimony of Dr. Guyot-Sionnest, a coauthor of Hines, who
expressly testified that the 10% range was used, over Dr. Murray’s opinion, which
is based on speculation. Whether or not Dr. Guyot-Sionnest employed the best
estimate, does not negate the coauthor’s explicit testimony on what he did.
Moreover, the Examiner provided strong and credible evidence, based on a
calculation derived from the express disclosure by Hines of a deviation of 3 Å
from a range of 27-30 Å, that an rms of 5% was obtained – which on its face meets
the recited limitation of claim 8.
Dr. Murray also testified that, when the cores in Hines are overcoated, the
cores increase in size (Second Murray Dec. ¶¶ 31, 32, & 51). Thus, according to
Dr. Murray, the sample of uncoated cores would not have the same core size when
overcoated (id. at ¶ 51). This argument is unpersuasive. Hines expressly refers to
“nanocrystals containing a core of nearly monodisperse CdSe of 27-30 Å diameter
with a ZnS capping 6 ± 3 Å thick.” (Hines, Abstract.) Thus, despite Dr. Murray’s
testimony, Hines with the same data concluded that the coated particles had cores
with a diameter of 27-30 Å diameter.
In the Appeal Brief, Patent Owner contends there is evidence that
undermines the argument that Hines discloses cores having no greater than a 5%
rms deviation in diameter (Patent Owner Appeal Br. 16). Citing disclosure in the
‘155 patent, Patent Owner argue that “it is possible to have a population of
nanocrystals, some with smaller cores and thicker overcoatings; some with larger
cores and thinner overcoatings,” but still with a narrow FWHM (“full width half
max” spectral range) because of wavelength shifts associated with changes in core
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size and overcoating thickness (id.; emphasis added). This argument is not
persuasive because it is speculative. Patent Owner has not provided objective
evidence that Hines was misled in concluding that cores had no greater than a 5%
rms deviation in diameter size.
Patent Owner also argues that the Examiner’s calculation is an error because
“1.5 divided by 28.5 is 0.0526, or 5.26%, which is greater than the 5% rms
deviation specified by claim 8.” (Patent Owner Appeal Br. 17.) However, as
argued by Requester:
A person of skill in the art would recognize that the result of
calculating the deviation should also be rounded to only one
significant digit, consistent with the claim language. In other words,
0.0526 would be rounded to 0.05. If the claim drafter intended the
limitation to distinguish between 5 % and 5.26 %, then the claim
drafter could have included a greater number of significant digits in
the claim. For example, the claim could have recited a deviation of not
greater than 5.00 %. But because the limitation is expressed using
only one significant digit, a person of skill in the art would not discern
a difference between 5 % and 5.26 %, as recited in the claim.
(Requester Respondent Br. 7.)
For the foregoing reasons, we conclude that a preponderance of the evidence
supports the Examiner’s determination that claim 8 is anticipated by Hines.

Claim 61
Claim 61 is drawn to “a family of nanocrystal dispersions” comprising “a
first suspension or dispersion of nanocrystals,” and “a second suspension or
dispersion of nanocrystals.” The Examiner found that Hines teaches “dilutions of
its concentrated nanocrystal solution used for room temperature optical
characterization (see [Hines] p. 469, col. 1, second full paragraph). Each diluted
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solution, including the original concentrated solution, is a member of the family of
dispersions.” (RAN 26.)
Patent Owner argues that Hines discloses one preparation of nanocrystals
and that subdividing that preparation into different containers and diluting them
does not create a family of dispersion (Patent Owner Appeal Br. 17). “To interpret
the claim as encompassing two groups of indistinguishable nanocrystals is to
ignore claim language requiring two different suspensions or dispersions of
nanocrystals.” (Id.)
Contrary to Patent Owner’s arguments, claim 61 does not require that the
nanocrystals in the first suspension must be different from the nanocrystals in the
second suspension. Patent Owner contends that the Examiner ignored claim
language requiring “two different” suspensions or dispersions, but such phrase
simply does not appear in the claim.
For the foregoing reasons, we conclude that a preponderance of the evidence
supports the Examiner’s determination that Claim 61 is anticipated by Hines.

2. OBVIOUSNESS OVER HINES
Claims 12, 23, 30, 41, 71, 97, and 151 stand rejected as being obvious under
35 U.S.C. § 103(a) over Hines (RAN 26). The claims are dependent on either
independent claim 1 or claim 25. Patent Owner traverses the rejection of these
claims for the same reasons they did for claims 1 and 25 (PO Appeal Br. 6). As we
found the arguments for claims 1 and 25 unavailing, we affirm the rejection of
claims for the reasons given by the Examiner.

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3. OBVIOUSNESS OVER HINES AND MURRAY
Claims 62-67, 74-84, 86, 87, and 95 stand rejected as obvious under 35
U.S.C. § 103(a) in view of Hines and Murray 1993 (RAN 29). Independent claim
74 is selected as representative of the rejected claims. Claim 74 is directed to a
family of nanocrystals dispersions comprising a first suspension or dispersion of
nanocrystals and a second suspension or dispersion of nanocrystals. Each
suspension or dispersion, “when irradiated emits light in a spectral range of no
greater than about 40 nm full width at half max (FWHM),” and has a “peak
wavelength of emission.” The claim recites that the peak wavelength of the first
and second suspensions or dispersions are different.
The Examiner found that Hines describes CdSe nanocrystals coated with
ZnS, meeting the claimed limitation of “first semiconductor material and an
overcoating including a second semiconductor material different from the first
semiconductor material deposited on the core.” (RAN 31). However, the
Examiner found that Hines does not describe a family of dispersions, as claimed,
each having a different wavelength of light emission (id. at 31-32). The Examiner
cited Murray 1993 for teaching to prepare cores of different sizes in order to
produce nanocrystals exhibiting different optical properties (i.e., emission
wavelengths) (id. at 32-33). The Examiner concluded:
it would have been obvious to one of ordinary skill in the art at the
time the invention was made to have made a family of Hines' ZnS-
capped CdSe nanocrystal dispersions having different emission
maximum wavelengths because Murray teaches that the CdSe
nanocrystals’ optical properties are tunable with particle size and also
teaches how to prepare and select nanocrystals of a particular particle
size.
(Id. at 76.)
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Patent Owner challenges the Examiner’s determination. First, Patent Owner
contends that “it is clear from Hines that the processes described therein could not
be used to form coated nanocrystals of various sizes, such as the family of
nanocrystal dispersions of claim 74.” (Patent Owner Appeal Br. 19.) Second,
Patent Owner argues that the “techniques for variation of nanocrystal core size
taught by Murray are incompatible for achieving size variation of in accordance
with the process of Hines.” (Id.) Citing Dr. Murray’s declaration, Patent Owner
argues that Hine’s one-pot method for synthesizing core is not compatible with the
size-selection precipitation described by Murray 1993 (id.).
These arguments are not persuasive.
The evidence does not support Patent Owner’s argument that Hines’ method
could not be used to produce coated nanocrystals of different sizes. Hines
describes a method in which CdSe nanocrystals are produced by a first injection of
a Cd/Se/TOP stock solution into a reaction vessel (Hines, p. 468, second col.,
“Experimental Section”). After the mixture is cooled to produce the CdSe cores,
Hines describes a second step of injecting a Zn/S/TOP solution into the same
vessel to overcoat the CdSe cores with ZnS (id. at p. 469, first col.) Hines
expressly teaches conditions that affect core size:
Since changes in the amount injected and temperature of TOPO
produces variations in the final CdSe size, the conditions described in
the previous section apply to the reproducible synthesis of rather
monodisperse nanocrystals between 27 and 30 Å as shown in their
absorption spectrum in their Figure 1.
(Id. at p. 469, col. 1, “Results and Discussion.)
Hines also teaches:
The procedure of adding Me2Zn and (TMS)2S in several steps at lower
temperature was guided by the need to minimize separate ZnS
nucleation and to avoid growth of the CdSe particles themselves.
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(Id. at p. 469, col. 2, ll. 2-5.)
Hines describes characteristics of the ZnS and CdSe materials, and observes
a “difficulty” in apparently making the nanocrystals or flat heterostructures, but
expressly states that “this difficulty may become relaxed for small nanocrystals
with short facets.” Hines, however, also adds that “[f]urther studies exploring
different sizes are in process.” (Hines, p. 469, col. 2, ll. 1-2,) Indeed, as discussed
below, Murray describes making nanocrystals of different sizes, the publication
referenced by Hines for making nanocrystals.
Thus, the evidence does not support Patent Owner’s conclusion that Hines
“could not be used to form coated nanocrystals of various sizes” because Hines
describes specific conditions that affect core size, and expressly disclosed that
ongoing processes to explore different size particles, providing direct evidence that
the authors believed that Hines’ process, in fact, could be used to make
nanocrystals of different sizes. (Patent Owner Appeal Br. 19.)
Patent Owner states that Murray 1993 and Hines are incompatible. This
argument is not supported by a preponderance of the evidence. Hines specifically
refers to Murray 1993 as the method followed to synthesize nanocrystals: “The
nanocrystals were synthesized by using modifications of previously reported
methods.8,20” Hines, p. 468, col. 2, “Experimental Section.” Reference 8 is the
Murray 1993 publication.
As discussed by the Examiner, Murray 1993 describes synthesizing
nanocrystals in the same way accomplished by Hines. Method 1 of Murray
involves injecting precursors into a reaction vessel, the same step followed by
Hines (Murray, p. 8707, “Method 1”). Murray describes removing sample at
different times such that “a series of sizes ranging from ~15 to 115 Å in diameter
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can be isolated from a single preparation.” (Id. at p. 8707, col. 2). Murray
explains that “[i]njection of reagents into the hot reaction pot results in a short
burst of homogeneous nucleation” that results in crystal growth (id. at p. 8707-
8708). Murray expressly teaches that “the average size and the size distribution of
crystallites in a sample are dependent on the growth temperature, consistent with
surface free energy considerations.” (Id. at p. 8708, col. 1) Murray also teaches:
“Steady controlled growth results in highly monodisperse particles of consistent
crystal structure and allows size selection by extracting samples periodically from
the reaction vessel.” (Id.) In other words, Murray’s teaches how its method can be
used to obtain different sized nanocrystals, which is the same method followed by
Hines in which solutions are injected into a reaction vessel.
Dr. Murray attempts to rebut the Examiner’s determination:
Hines’s one-pot method is not compatible with the size-
selective precipitation described in the Murray reference. In particular,
a one-pot method does not allow for any separation (e.g., size-
selective precipitation) steps after formation of core nanocrystals but
before overcoating of the cores.
(Second Murray Decl. ¶ 34.)
As explained above, Dr. Murray in his own publication discloses in clear
and explicit language that differently sized nanocrystals can be obtained from one
reaction vessel, i.e., by removing samples at different times during the controlled
growth. Dr. Murray’s statements to the contrary lack evidentiary support. The
reference by Patent Owner and Dr. Murray to “size-selective precipitation” is
performed in the Murray publication after the one pot injection method of making
differently sized nanocrystals (Murray, p. 8708, “Colloid Stabilization and Size-
Selective Precipitation”). Hines did not perform the additional size-selection
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precipitation because its modified method, based on the Murray publication, was
sufficient to produce nanocrystals of a narrow size distribution:
The ability to synthesize nearly monodisperse CdSe without further
size-selective precipitations8 [8 is the Murray 1993 publication] is
evidently critical to retain a narrow size distribution with an additional
coating.
(Hines, p. 469, first column, “Results and Discussion”). As indicated above, Hines
followed Murray’s method to make its nanocrystals (“The nanocrystals were
synthesized by using modifications of previously reported methods.8,20” Hines, p.
468, col. 2, “Experimental Section.” Reference 8 is the Murray 1993 publication.).
Hines recognized that using the additional selective precipitation step of Murray
was unnecessary, but still Hines clearly followed Murray’s earlier step which
enabled making different sized nanocrystals.
For the foregoing reasons, we affirm the rejection of claim 74, and claims
62-67, 75-81, and 95 which were not separately agued.

Claims 82-84, 86, and 87
Claim 82 is directed to a family of nanocrystal dispersions “wherein the
peak wavelengths of light emission of the plurality of nanocrystal dispersions span
a wavelength range of at least 50 nm.” Patent Owner contends that such range is
not disclosed or suggested by Murray and Hines (PO Appeal Br. 21). We do not
agree. Murray expressly teaches a range of dispersions of different sizes, with
wavelengths of about 400 to above 700, including what appears to spans of about
50 nm, clearly suggesting the desirability of the claimed limitation of a wavelength
range of at least 50 nm. (See Murray 1993, Figure 3.) The rejection of claim 82-
84, 86, and 87 as obvious in view of Hines and Murray is affirmed.

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4, 5. OBVIOUSNESS OVER HINES AND PREMACHANDRAN; HINES AND
COFFER
Claims 17 and 35 stand rejected under 35 U.S.C. § 103(a) over Hines and
Premachandran5 (RAN 33). Claims 17 and 35 stand rejected under 35 U.S.C. §
103(a) over Hines and Coffer6 (RAN 35). The Examiner provided fact-based
reasoning for rejecting the claims. Patent Owner did not identify a defect in the
Examiner’s fact-finding nor reasoning. The rejection is affirmed for the reasons
set forth by the Examiner.

6. ANTICIPATION BY DANEK
Claims 94-97 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Danek7 (RAN 40). The Examiner provided fact-based reasoning for rejecting the
claims. Patent Owner did not identify a defect in the Examiner’s fact-finding nor
reasoning (see PO Appeal Br. 7-8). The rejection is affirmed for the reasons set
forth by the Examiner.

5 Premachandran, R., The Enzymatic Synthesis of Thiol-Containing Polymers to
Prepare Polymer-CdS Nanocomposites, 9 Chem. Mater 1342-1347 (1997).
6 Coffer, J. et al., Characterization of quantum-confined CdS nanocrystallites
stabilized by deoxyribonucleic acid (DNA), Department of Chemistry, Texas
Christian University (1992).
7 Danek, M. et al., Preparation of II-VI quantum dot composites by electrospray
organometallic chemical vapor deposition, 145 Journal of Crystal Growth, 714-
720 (1994).
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7. ANTICIPATION BY KORTAN
Claim 94 stands rejected under 35 U.S.C. § 102(b) as anticipated by Kortan.8
(RAN 46). The Examiner provided fact-based reasoning for rejecting the claims.
Patent Owner did not identify a defect in the Examiner’s fact-finding nor reasoning
(see PO Appeal Br. 7-8). The rejection is affirmed for the reasons set forth by the
Examiner.

8. OBVIOUSNESS OVER KORTAN AND MURRAY
Claim 1-3, 6-16, 18-34, 36-51, 61-71, 74-84, 86, 87, 94-97, 151, and 152
stand rejected as obvious under 35 U.S.C. § 103(a) over Kortan and Murray 1993
(RAN 47).
The Examiner found that Kortan described almost all the elements of the
claimed monodisperse population of nanocrystal particles, but not that “the
monodisperse population exhibits photoluminescence having a quantum yield of
greater than 15%” as recited in claims 1-3, 6-16, 18-34, 36- 51, 53-71, 151 and
152; are monodisperse as claims 1, 32, 53, 60, 68, 82, 94 and their dependent
claims; or, as in claims 7, 8, 25 and 26, the CdSe cores have diameters having no
more than 10% rms deviation or no more than 5% rms deviation (RAN 50-51).
However, the Examiner found that Kortan “recognizes that the uniformity of
crystal size, i.e., a monodisperse particle population, is desirable because of the
size dependence of the optical properties.” (Id. at 51.) The Examiner also found
that Murray 1993 teaches the synthesis of monodisperse CdSe nanocrystal, size

8 Kortan, A.R. et al., Nucleation and Growth of CdSe on ZnS Quantum Crystallite
Seeds, and Vice Versa, in Inverse Micelle Media, 112 J. Am. Chem. Soc. 1327-
1332 (1990).
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selective precipitation to obtain CdSe nanocrystals with core diameters less than
5% rms, and quantum yields in the claimed range (id. at 51-52).
The Examiner found that it would have been obvious to one of ordinary skill
in the art at the time the invention was made to have used Murray’s monodisperse
CdSe particles having <5% rms deviation in diameter to prepare Kortan’s ZnS-
coated CdSe particles:
. . . because Kortan recognizes that optical and electronic properties of
the crystals are size dependent and desires uniform crystallites;
Murray, as well, recognizes the desirability of monodisperse
nanocrystal structures; and the well known desirability in the art of
obtaining as high a quantum yield as possible. A skilled artisan would
expect that by coating Murray's bare CdSe dots with ZnS, as per the
teachings of Kortan, the coated would have a higher quantum yield
than the bare dots. . . . Kortan teaches that after ZnS growth on CdSe,
the quantum yield significantly increased.
(Id. at 52-53.)
Patent Owner challenges the Examiner’s determination that it would have
been obvious to one of ordinary skill in the art to coat Murray’s particles using
Kortan’s method. According to Patent Owner, the skilled worker would not have
been motivated to take the nanocrystals described in Murray and attempt to
overcoat them according to the methods of Kortan (Patent Owner Appeal Br. 9).
Patent Owner provided testimony by Dr. Murray that “reaction conditions
described in the Murray reference are incompatible with those of Kortan; most
dramatically, the cadmium source used in the Murray reference reacts dangerously
with water.” (Id.)
Murray reference uses dimethylcadmium as a metal source, which is
liquid at room temperature, and reacts violently and dangerously in
either air or water. It has long been known that many organometallic
reagents, particularly metal alkyls (dimethylcadmium being one
example) react violently and dangerously with oxygen and water.
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Unlike metal salts, handling dimethylcadmium involves the risk of
fire (if it comes in contact with air or water) and requires special
precautions to avoid even small amounts of air or water. Because of
these hazards, metal alkyls, including dimethy1cadmium, are never
used in aqueous reactions.
(Second Murray Decl. ¶ 56.)
Where Kortan uses an aqueous system without any coordinating
solvent, the Murray reference uses coordinating organic solvents (e.g.,
TOP and TOPO). As mentioned, the dimethylcadmium in the Murray
reference is completely incompatible with any aqueous system.
(Second Murray Decl. ¶ 57.)
Requester provided evidence that a person of skill in the art would not be
dissuaded from combining Kortan and Murray. Specifically, Requester cited the
Dabbousi9 reference, published in 1994, three years before the priority date of the
'155 Patent. Dabbousi was co-authored by B.O Dabbousi, C.B. Murray, M.F.
Rubner, and M.G. Bawendi. Dabbousi and Bawendi are listed as co-inventors of
the ‘155 Patent and C.B. Murray is the declarant of the first and second Murray
Declarations and the co-author of the Murray 1993 reference.
Dabbousi describes the deposition of monolayers of size-selected CdSe
nanocrystals deposited on a water surface (Dabbousi, Abstract (“Size-selected
CdSe nanocrystallites capped with trioctylphosphine oxide are directly applied
onto the water surface of a LB trough and serve as the LE active species.”)
According to Dabbousi, a spreading solution of the CdSe nanocrystals in
chloroform was prepared and the nanocrystals were then deposited at an air-water
interface (id. at p. 216 (“Experimental Section”)). Requester states:

9 Dabbousi, B.O., Murray, C.B., Rubner, M.F., and Bawendi, M.G., Langmuir-
Blodgett Manipulation of Size-Selected CdSe Nanocrystallites, 6 Chem. Mater 216-
219 (1994).
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According to the second Murray declaration, a person of skill in
the art would not be motivated to expose nanocrystals prepared
according to the Murray reference to air or water for fear of a violent
reaction. However, Murray's own published work contradicts this
statement; the Dabbousi reference describes doing exactly that
manipulating nanocrystals prepared according to the Murray reference
at an air-water interface. The Dabbousi reference mentions nothing
about any potential of a violent reaction.
(Requester Respondent Br. 4)
The Dabbousi publication persuasively shows that, contrary to Dr. Murray’s
testimony, CdSe nanocrystals had been used with water, and therefore would not
have been expected to be incompatible with an aqueous system, such as the system
described by Kortan.
Patent Owner also argues that the nanocrystals described in Murray 1993
could not be put into inverse micelles as taught by Kortan. Patent Owner contends:
In the Murray reference, nanocrystals are prepared with a surface cap
of TOP/TOPO, such that the nanocrystal surface is surrounded by
hydrophobic octyl chains . . . A person of ordinary skill in the art
would have realized that Murray’s octyl-capped nanocrystals would
not partition to the aqueous phase of Kortan's inverse micellar
medium, and therefore, attempting to overcoat Murray's nanocrystals
by Kortan's method would be futile.
(Patent Owner Appeal Br. 10.)
This argument is not persuasive. As found by the Examiner, Kortan
describes nanocrystals with a phenyl group as an organic layer on the outer surface
(RAN 50; Kortan, p. 1327, col. 2). Phenyl is hydrophobic. Thus, contrary to
Patent Owner’s arguments, Kortan describes nanocrystals capped with
hydrophobic materials, as does Murray 1993. Patent Owner’s argument does not
address this characteristic of Kortan’s nanocrystals.
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Patent Owner also contends that Murray’s nanocrystals are high quality, but
Kortan’s are low quality. Based on these differences, Dr. Murray concluded that
"the difference in quality of the nanocrystals would not lead a person of skill in the
art to make high quality nanocrystals and then use them in a method known to
produce lower quality nanocrystals." (Second Murray Decl. 61.)
This argument is also not persuasive. Even assuming that the Murray’s core
is of better “quality” than Kortan’s, the skilled worker would certainly have had
reason to substitute Murray’s better quality core in Kortan to obtain the benefits of
a core with better properties. The Examiner provided explicit and persuasive
reasoning as to why the skilled worker would have had reason to used Murray’s
monodisperse CdSe to prepare Kortan’s particles (RAN 82-83).
For these reasons, Patent Owner’s argument about the lack of reason to have
combined Kortan and Murray is not persuasive.

Claims 43-51 and 152
Independent claim 43 is directed to a method preparing a monodisperse
population of nanocrystals comprising a step of “introducing into a coordinating
solvent a plurality of isolated cores,” where “the coordinating solvent is maintained
at a temperature sufficient to convert the precursor into the second semiconductor
material yet insufficient to substantially alter the monodispersity of the cores.”
Claims 44-51 and 152 depend on claim 43.
The Examiner did not address the coordinating solvent limitation of claim
43. However, as pointed out by Patent Owner, the Examiner did not reject
independent claim 53 which recites a “coordinating solvent” step over the
combination of Kortan and Murray. The Examiner found:
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The methods of claims 53-60 and 88-93 require the use of a
coordinating solvent when coating the cores. Kortan uses water as the
solvent. As noted in ¶54 of the Second Murray Declaration, Kortan
uses an aqueous system without a coordinating solvent.
(RAN 49.)
Since claims 43-51 and 152 have this same limitation, and the Examiner did
not set forth a prima facie case of obviousness, we are compelled to reverse the
rejection of claims 43-51 and 152 as obvious in view of Kortan and Murray.

9. OBVIOUSNESS IN VIEW OF KORTAN, MURRAY, AND
PREMACHANDRAN
Claims 17 and 35 stands rejected under 35 U.S.C. § 103(a) as obvious in
view of Kortan, Murray, and Premachandran (RAN 54). The Examiner provided
fact-based reasoning for rejecting the claims. Patent Owner did not identify a
defect in the Examiner’s fact-finding or reasoning. The rejection is affirmed for
the reasons set forth by the Examiner.

10. OBVIOUSNESS IN VIEW OF KORTAN, MURRAY, AND COFFER
Claims 17 and 35 stands rejected under 35 U.S.C. § 103(a) as obvious in
view of Kortan, Murray, and Coffer (RAN 55). The Examiner provided fact-based
reasoning for rejecting the claims. Patent Owner did not identify a defect in the
Examiner’s fact-finding or reasoning. The rejection is affirmed for the reasons set
forth by the Examiner.
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III. APPEAL BY REQUESTER
Kuno Publication Rejections
Requester proposed anticipation and obviousness rejections based on the
Kuno publication, published less than a year before the inventors filed the
application that led to the ‘155 patent (Requester Appeal Br. 5-6). Under 35
U.S.C. § 102(a), a person shall be entitled to a patent unless “the invention was
known or used by others in this country, or patented or described in a printed
publication in this or a foreign country, before the invention thereof by the
applicant for a patent.” The disclosure therefore comes within the scope of
§102(a) only if the description is not of the inventors’ own work.
The Examiner did not adopt the rejections because the Examiner was
persuaded by evidence provided by Patent Owner that Kuno was not the work of
others, but of the inventors of the ‘155 patent. This evidence is:
● Declaration of Masaru K. Kuno under 37 C.F.R § 1.132. Kuno is a co-
author of the Kuno reference.
● Declaration of Jin-Kyu Lee under 37 C.F.R § 1.132. Lee is a co-author of
the Kuno reference.
● Declaration of Moungi G. Bawendi under 37 C.F.R § 1.132. Bawendi is a
co-author of the Kuno reference and a listed co-inventor of the ‘155 Patent.
The ‘155 patent lists the co-inventors as 1) Dabbousi; 2) Mikulec; 3)
Bawendi; 4) Jensen; and 5) Rodriguez-Viejo (the “inventive entity”). The Kuno
publication lists the co-authors as: 1) Kuno; 2) Lee; 3) Dabbousi; 4) Mikulec; and
5) Bawendi. Thus, the Kuno publication includes two additional parties, Kuno and
Lee, but leaves off Jensen and Rodriguez-Viejo. Kuno and Lee are not listed as
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inventors of the ‘155 Patent. The Kuno publication is therefore presumptively the
work of “another” because its authorship is not the same as the inventive entity of
the ‘155 patent. However, “an inventor's own work cannot be used to invalidate
patents protecting his own later inventive activities unless, inter alia, he places it
on sale or uses it publicly more than a year before filing.” Invitrogen Corp. v.
Biocrest Manufacturing L.P., 424 F3d 1374 (Fed. Cir. 2005) (citing 35 U.S.C. §
102(b); In re Katz, 687 F.2d 450, 454 (CCPA. 1982); In re Facius, 408 F.2d 1396,
1406 (CCPA 1969)). Thus, the specific question is whether the relevant portions
of Kuno cited as anticipatory or suggesting the claimed subject matter is the work
of the ‘155 inventors. If the Kuno publication is the work of the ‘155 inventors,
then the Kuno publication is not the work of another and is not prior art under 35
U.S.C. § 102(a). As explained in In re Katz, 687 F.2d at 455, the question is “an
evidentiary one, namely, the sufficiency of applicant's showing to establish that the
subject disclosure was his original work, and his alone.”
In Katz, the publication had additional authors who had not been included as
inventors in the subject patent application. Here, those authors are Kuno and Lee.
The court held:
In the declaration, appellant provides the explanation that the
co-authors of the publication, Chiorazzi and Eshhar, “were students
working under the direction and supervision of the inventor, Dr.
David H. Katz.” This statement is of significance since it provides a
clear alternative conclusion to the board's inference that their names
were on the article because they were coinventors. As acknowledged
by the examiner, the names of individuals may be given as authors of
a scientific report who are “involved only with assay and testing
features of the invention.” Appellant's explanation is, thus, consistent
not only with the content of the article but with the nature of the
publication.
Katz, 687 F.2d at 455.
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A declaration was provided by inventor Moungi G. Bawendi. Dr. Bawendi
testified:
The disclosed subject matter of the Kuno reference that is relied upon
for the rejection of claims 1-69 in the Office Action and for the
rejection of claims 1-152 in the ACP was invented by myself, Klaus
F. Jensen, Bashir O. Dabbousi, Javier Rodriguez-Viejo, and Frederic
Victor Mikulec, and is not the work of another.
(Bawendi Decl. ¶ 7.)
Although Dr. Bawendi did not describe the contribution that co-authors
Kuno and Lee made to the Kuno publication as did Katz for his co-authors in In re
Katz, Dr. Bawendi did make the statement that work in Kuno relied upon in
making the rejection was “invented by” himself and his other four co-inventors.
Katz specifically held this type of statement was sufficient to settle the doubt about
inventorship raised by a publication which describes the same invention which is
claimed, but which is attributed to a different entity: “. . . if the author (whether he
is the applicant or not) specifically states that he is describing the work of the
applicant, no question at all is raised.” Katz, 687 F.2d at 455.
Unlike in Katz, the ‘155 patent has additional inventors who are not listed on
the Kuno publication. Specifically, Jensen and Rodriguez-Viejo are not listed as
authors of the Kuno publication, but are included as inventors of the ‘155 patent.
Yet, Dr. Bawendi testified that work described in the Kuno publication is that of all
the inventors of the ‘155 patent, including Jensen and Rodriguez-Viejo. However,
there is no legal requirement for Jensen and Rodriguez-Viejo to have been
included as co-authors of the Kuno publication. Inventorship, in contrast, is
statutory. Under 35 U.S.C. § 115(b), an applicant for a patent is required to make
an oath or declaration that the “individual believes himself or herself to be the
original inventor or an original joint inventor of a claimed invention in the
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application.” Such declaration was made here, and there is no evidence here that
the declaration is defective. Thus, there is inadequate basis to question the
inventorship of the ‘155 patent. Indeed, the court in Katz held that “authorship of
an article by itself does not raise a presumption of inventorship with regard to the
subject matter disclosed in the article.” Katz, 687 F.2d at 455. In this case, Patent
Owner identified specific experiments described in the Kuno publication which
were not disclosed in the ‘155 Patent (Patent Owner Respondent Br. 5). The
disclosure of the ‘155 patent and Kuno publication are not the same, which could
presumably account for the differences in who the work was ascribed to in each.
Mr. Bawendi also specifically stated that Kuno and Lee were not involved in
the discovery or development of the claimed coated nanocrystals.
Unlike Dabbousi, Mikulec, Jensen, Rodriguez-Viejo and myself,
Kuno and Lee were not involved with any discovery or development
of the concepts with regard to the populations of coated nanocrystals
that are claimed in U.S. Patent No. 6,861,155 and in the above-
referenced reexamination proceeding.
(Bawendi Decl. ¶ 6.)
Mr. Bawendi’s statements are consistent with those of Kuno and Lee. Both
Kuno and Lee testified:
Unlike Dabbousi, Mikulec, and Bawendi, I was not involved with any
discovery or development of subject matter which is claimed in the
'155 patent. All possibly relevant portions of the Kuno reference
originated with, or were obtained from, the inventors of the '155
patent.
(Kuno Decl. ¶3; Lee Decl. ¶3.)
The weight of the evidence thus is sufficient to establish the work described
in Kuno which served as the basis of the anticipation and obviousness rejections is
the work of the inventive entity of the ‘155 Patent, and not another’s work. The
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Examiner’s determination not to adopt the rejections over Kuno is therefore
supported by a preponderance of the evidence, and we affirm the Examiner.
With respect to the arguments about the timeliness of the Bawendi
declaration, we note that the Examiner entered the declaration into the record, and
thus the declaration is evidence before us. The Board does not have supervisory
authority over the Examiner’s conduct in entering evidence into the record.
Consequently, Requester’s relief was by way of a petition to the Director to direct
the Examiner to expunge the evidence from the record.

Danek Rejections
The Examiner did not adopt Requester’s proposed rejection of claims 1, 2,
4-16, 18-20, 25-34, 30-38, 43, 47-53, 55-62, 67-73, 88, 151 and 152 under 35
U.S.C. § 102(b) as anticipated by Danek (RAN 41-42). The Examiner also did not
adopt obviousness rejections based on Danek (id.). The Examiner found that “the
evidence of record indicates that the CdSe/ZnSe quantum dots of Danek have a
quantum yield of ≤0.4%, i.e., well below the claimed ranges of greater than 15%,
greater than about 15%, greater than 30% and greater than 40%.” (Id. at 43.)
Requester contends “Danek does not specifically disclose the quantum yield
of the materials described therein, the Danek materials would be expected to have
the same quantum yield as the materials described in the' 155 Patent because the
same methods were used to prepare both sets of materials. . . . In other words, if
the same process is used to prepare two batches of nanocrystals, then those two
batches would be expected to have the same quantum yields (within the limits of
reproducibility).” (Requester Appeal Br. 24-25.) Requester provides a comparison
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between Danek, Danek I,10 and the ‘155 Patent, which Requester contends
establishes that the same method in the ‘155 patent was used to prepare
nanocrystals as in Danek, and thus both would inherently have the same quantum
yield (id. at 25 & 28). Danek I is a reference published in 1996 which also
describes CdSe nanocrystals coated with ZnSe.
Requester’s arguments are not persuasive. Examiner provided express
evidence of a difference between the method described in the ‘155 patent and in
Danek. The bare nanocrystals described by Danek are capped with pyridine, in
contrast to the TOP/TOPO capped crystals in the ‘155 Patent (RAN 45). The
Examiner’s finding is supported by Danek: “The TOP /TOPO surface functionality
(cap) was exchanged for pyridine by repeated dispersion of the NCs [nanocrystals]
in pyridine and precipitation by hexanes.” (Danek, p. 715, second col.). Danek I
has similar disclosure about derivatizing the surface with pyridine (Danek I, p. 174,
col. 2, 7-12). The bare CdSe dots which served as the baseline for Requester’s
arguments were TOP/TOPO capped, but the CdSe dots in Danek are pyridine
capped (RAN 45). The Examiner’s findings are supported by Danek’s disclosure,
and have not been rebutted by Requester. Thus, Requester’s premise that the
methods used to produce the claimed nanocrystals particles and those used by
Danek are the same is not supported by the evidence of record. For this reason,
Requester’s conclusion that the claimed nanocrystals and those of Danek would be
expected to have the same quantum yield is not supported by a preponderance of
the evidence before us.

10 Dankek, M., Jensen, K.F., Murray, C.B., and Bawendi, M.G. Synthesis of
Luminescent Thin-Film CdSe/ZnSe Quantum Dots Composites Using CdSe
Quantum Dots Passivated with an Overlayer of ZnSe, 8 Chem. Mater. 173-180
(1996).
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In addition to this, as argued by the Examiner, the quantum yield of Danek’s
coated nanoparticles was described in the ‘155 Patent to be ≤0.4% (‘155 Patent,
col. 2, ll. 32-40), far less than the required 15% of the claims. This value was
reported in Danek I as follows:
The yield of band-edge emission from the bare particles capped with
pyridine is very low ([about] Ф 0-0.05%), whereas the
photoluminescence yield for the overcoated particles is [about] 0.3-0.4
(Danek I, p. 177, second column, first full ¶.)
Because Requester did not establish by a preponderance of the evidence that
Danek describes the claimed nanocrystals, we affirm the Examiner’s decision not
to adopt the rejection of claims as anticipated and obvious in view of Danek.

Non-adopted rejection under § 112, first paragraph
Requester contends that claims 1, 2, 4-16, 18-20, 25-34, 36-38, 43, 47-53,
55-62, 67-73, 88, 151, and 152 are invalid under 35 U.S.C. § 112, first paragraph
for lacking enablement and written description (Requester Appeal Br. 14).
Requester contends that should the Board agree with the Examiner that Danek does
not anticipate these claims, then these claims must be rejected under 35 U.S.C.
§ 112, first paragraph, for failing to enable and provide adequate written
description of the claimed invention (id. at 30). Requester argues that if the
disclosure of Danek I is not adequate to allow a person of skill in the art to prepare
CdSe(ZnSe) nanocrystals exhibiting photoluminescence having quantum yield of
greater than 15%, Patent Owner cannot argue that the ‘155 Patent provides
adequate disclosure to support the same value, when the methods of Danek and the
patent are essentially the same (id. at 30-31).
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Requester’s proposed enablement/written description rejection is based on
the presumption that the methods of the ‘155 Patent and Danek are the same. As
discussed above, the Examiner provided sufficient evidence to establish that the
two methods are not the same. Because the Requester’s basis for the proposed
rejection is not factually supported, we agree with the Examiner’s determination
not to adopt it.

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for
requesting rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph (d) of this section, and for submitting comments under
paragraph (c) of this section may not be extended.
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002 may not be
taken “until all parties' rights to request rehearing have been exhausted, at which
time the decision of the Board is final and appealable by any party to the appeal to
the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008).

Appeal 2013-000713
Reexamination Control 95/001,268
Patent 6,861,155 B2

35
AFFIRMED-IN-PART

Appeal 2013-000713
Reexamination Control 95/001,268
Patent 6,861,155 B2

36

PATENT OWNER:

STEPTOE & JOHNSON, LLP
1330 Connecticut Avenue, N.W.
Washington, DC 20036

THIRD PARTY REQUESTER:

WONG, CABELLO, LUTSCH
RUTHERFORD & BRUCCULERI, LLP
20333 SH 249 6th STREET
Houston, TX 77070

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