Ex Parte 7585349 et al

Patent Trial and Appeal Board

Oct 25, 2016

90013318 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
90/013,318 08/13/2014
7590 10/25/2016
STOEL RIVES LLP
ONE UTAH CENTER
SUITE 1100
201 SOUTH MAIN STREET
SALT LAKE CITY, UT 84111
FIRST NAMED INVENTOR
7585349
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82233-00020 2887
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAILDATE DELIVERY MODE
10/25/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte University of Washington,
Patent Owner and Appellant
Appeal2016-006039
Reexamination Control 90/013,318
Patent 7 ,585,349 B2
Technology Center 3900
Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and
RAEL YNN P. GUEST, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
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Reexamination Control 90/013 ,318
Patent 7 ,585,349 B2
University of Washington, the owner of the patent under
reexamination (hereinafter the "'349 Patent"), appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection of claims 7, 9-11, and 13-20
(Appeal Brief filed January 26, 2016, hereinafter "App. Br.," 4; Final Office
Action mailed July 24, 2015). 1 We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We REVERSE.
STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Teresa A. La venue of the law firm Hogan
Lovells US LLP, (Request for Ex Parte Reexamination filed August 13,
2014). The '349 Patent issued to Younan Xia and Yugang Sun on
September 8, 2009, from Application 10/732,910, filed on December 9,
2003. Of particular importance to this proceeding is that Application
10/732,910 claims priority to Provisional Application 60/432,098 (the "'098
provisional application"), filed on December 9, 2002.
The '349 Patent is directed to the formation of silver nanostructures,
and in particular, silver nanowires, in a controlled fashion. (Col. 3, 11. 40-
58; col. 5, 11. 22-28.)
1 We are informed that claims 1--4 were not subject to reexamination, claims
5 and 6 were determined to be patentable, claims 8, 12, and added claims
25-39 have been cancelled, and current claims 15-20 were originally
presented as claim 16, 17, 19, 21, 22, and 24. (App. Br. 4, n.1; Final Office
Action Summary.)
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Patent 7 ,585,349 B2
Claims 7 and 11 are the independent claims on appeal. Claim 7 on
appeal is representative and reads as follows (with underlining to show
additions relative to the claim as originally issued):
7. A method of manufacturing silver nanowires having a
desired shape and size, the method comprising:
obtaining a solution of silver nitrate in a solvent;
obtaining a solution of poly( vinyl pyrrolidone) in a
solvent;
selecting at least one reaction condition to yield a silver
nanowire having a desired shape and size;
combining the solution of silver nitrate m solvent and the
solution ofpoly(vinyl pyrrolidone) in solvent together; and
allowing a reaction to occur at a reaction temperature
over a growth time!.
wherein the solution of silver nitrate in solvent has a
concentration of less than about 0 .1 moll dm3.
(Claims App'x, App. Br. 18-19.)
The Examiner rejected claims 7, 9-11, and 13-20 under 35 U.S.C.
§ 103(a) as obvious over Sun et al., "Uniform Silver Nanowires Synthesis by
Reducing AgN03 with Ethylene Glycol in the Presence of Seeds and
Poly(Vinyl Pyrrolidone)," Chemistry of Material, Vol. 14, No. 11,
10/8/2002, pages 4736-4745 (hereinafter "Sun l ")as evidenced by Sun et
al., "Polyol Synthesis of Uniform Silver Nanowires: A Plausible Growth
Mechanism and the Supporting Evidence," Nano Letter, Vol. 3, No. 7,
6/10/2003, pp. 955-960 (hereinafter "Sun 2"). (Ans. 5-7.)
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ISSUE
The central dispute in this appeal is whether the claims on appeal are
entitled to priority to the '098 provisional application. As discussed above,
the '349 Patent has a filing date of December 9, 2003, and the '098
provisional application was filed on December 9, 2002. The publication
date of Sun 1 is October 8, 2002. Thus, if the claims on appeal are not
entitled to claim priority to the '098 provisional application, Sun 1 was
published more than a year prior to the filing of the '349 Patent and qualifies
as prior art under 35 U.S.C. § 102(b) (pre-AIA). However, ifthe claims on
appeal are entitled to the filing date of the '098 provisional application, then
Sun 1 qualifies as prior art under 35 U.S.C. § 102(a) (pre-AIA), and may be
disqualified as prior art. 2
The Examiner found that that the '098 provisional application does
not support every element of independent claims 7 and 11, and in particular
that the '098 provisional application does not describe the step of "selecting
at least one reaction condition to yield a silver nanowire having a desired
shape and size," as recited in claim 7. (Ans. 5-7.)
2 In the Answer, the Examiner withdrew a rejection based on Sun 2, which
was published on June 10, 2003 in view of Declarations filed by Patent
Owner on September 15, 2015, stating that the work described in Sun 2 is
that of the inventors, and the additional authors of Sun 2 were merely acting
under the direction of the inventors. (Ans. 4.) A review of the electronic
record reveals that no declarations were filed on September 15, 2015.
Declarations under 37 C.F.R. § 1.132 of Yugang Sun ("Sun Declaration,"
executed on September 21, 2015) and Younan Xia ("Xia Declaration,"
executed on September 18, 2015) were filed on September 21, 2015 and
contained the statements referenced by the Examiner. We are of the view
that the September 15th date referenced by the Examiner, instead of
September 21st, is harmless error.
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Appellant contends that the '098 provisional application contains
sufficient disclosure to support the nanowire limitations recited in the
claims, because the '098 generally describes how to control shapes of silver
nanoparticles, and explicitly describes silver nanowires. (App. Br. 6-7 .)
Appellant argues further that, in describing the products produced by the
reaction of silver nitrate and poly( vinyl pyrrolidone ), the '098 provisional
application describes the concentration of silver nitrate necessary to produce
silver nanowires as a major product versus silver nanocubes as a major
product. (App. Br. 7-10.)
Thus, the principal issue in this appeal is:
Has Appellant identified reversible error in the Examiner's position
that the '098 provisional application does not provide written descriptive
support for the nanowire limitations present in the claims on appeal?
FINDINGS OF FACT ("FF")
1. The '098 provisional application discloses:
The intrinsic properties of a metal nanoparticle are mainly
determined by its size, shape, composition, crystallinity, and
structure (solid vs. hollow). In principle, one could control any
one of these parameters to fine-tune the properties of this
nanoparticle. Many metals can now be processed into
monodisperse nanoparticles with controllable composition and
structure (13), and sometimes in large quantities through
solution-phase methods (14, 15). Despite this, the challenge to
synthetically control the shape of metal nanoparticles has been
met with limited success.
(P. 2, 11. 6-13.)
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2. The '098 provisional application discloses:
The primary reaction involved the reduction of silver nitrate
with ethylene glycol at 160 °C. In this so-called polyol process
(23), the ethylene glycol served as both reductant and solvent.
We recently demonstrated that this reaction could yield
bicrystalline silver nanowires in the presence of a capping
reagent such as poly(vinyl pyrrolidone) (PVP) (24).
Subsequent experiments suggested that the morphology of the
product had a strong dependence on the reaction conditions.
When the concentration of AgN03 was increased by a factor of
three and the molar ratio between the repeating unit of PVP and
AgNQ3 was kept at 1.5, single crystalline nanocubes of silver
were obtained (25).
(P. 2, 1. 21-p. 3, 1. 4.)
3. The '098 provisional application discloses:
The morphology and dimensions of the product were found to
strongly depend on reaction conditions such as temperature, the
concentration of AgN03, and the molar ratio between the
repeating unit of PVP and 1A .. gJ'JQ3. For example, \vhen the
temperature was reduced to 120 °C or increased to 190 °C, the
product was dominated by nanoparticles with irregular shapes.
The initial concentration of AgNQ3 had to be higher than ~0.1
M, otherwise silver nanowires were the major product.
(P. 4, 11. 4--9.)
4. The '098 provisional application discloses:
These silver and gold nanoparticles should find use in a variety
of areas that include photonics, catalysis, and SERS-based
sensing. This work and previous demonstrations from other
groups (17-22) make it clear that chemical synthesis of metal
nanoparticles with well-controlled shapes, sizes, and structures
is a practical reality. The major requirement seems to be the
selection of a capping reagent that is able to chemically modify
various faces of a metal with an appropriate selectivity.
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(p. 7' 11. 8-13.)
5. The '098 provisional application discloses:
In a typical synthesis of silver nanocubes, 5 mL anhydrous
ethylene glycol (Aldrich, 99.8%) was heated at 160 °C for 1
hour. 3 mL ethylene glycol solution of AgN03 (0.25 M,
Aldrich, 99+%) and 3 mL ethylene glycol solution of PVP
(0.375 Min repeating unit, Mw~55 000, Aldrich) were
simultaneously added to the ethylene glycol using a
two-channel syringe pump at a rate of 0. 3 7 5 mL/min. The
reaction mixture was then continued with heating at 160 °C for
another 45 min. The product was dominated by cubic
nanoparticles, with a small amount ( <5%) of silver nanowires.
These nanowires could be easily separated from nanocubes
through filtration due to their large difference in dimension.
(P. 8, 1. 20-p. 9, 1. 4 (endnote 25).)
PRINCIPLES OF LAW
In order to be entitled to the benefit of a provisional application, one
requirement is that the invention presently claimed must have been disclosed
in the provisional application in the manner provided by 35 U.S.C. § 112,
first paragraph. See 35 U.S.C. § 119(e)(l); New Railhead Mfg., L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002).
To satisfy the written description requirement, a patent applicant must
"convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention." Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991) (emphasis omitted).
The mere absence of literal support for a claim limitation "does not, in and
of itself, establish a prima facie case for lack of adequate descriptive support
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under the first paragraph of 35 U.S.C. 112." Ex parte Parks, 30 USPQ2d
1234, 1236 (BPAI 1993) (citations omitted).
ANALYSIS
Upon careful review of the record, we agree with Appellant, that
claims 7, 9-11, and 13-20 are supported by the '098 provisional application.
In its broadest disclosure, the '098 provisional application is directed to
metal nanoparticles, which include both nanowires and nanocubes. (FF 1,
FF4; Title.) Although the discussion in the '098 provisional application
focuses on the preparation of silver nanocubes, the '098 provisional
application specifically discloses that silver nanowires are produced by the
combination of silver nitrate and poly( vinyl pyrrolidone ). (FF 2.) That is,
the '098 provisional application conveys to one of ordinary skill in the art
that when the concentration of silver nitrate is below 0.1 M, silver nanowires
are the major product. (FF2, FF3.) Conversely, the '098 provisional
application expressly describes conditions that lead to the preparation of
silver nanocubes with a minor amount of nanowires, where the minor
amount of nanowires can be easily separated. (FF5.) Thus, the '098
provisional application informs one of ordinary skill in the art that the
inventors were in possession of processes producing silver nanocubes and
silver nanowires. In addition, the '098 provisional application provides
conditions necessary to obtain nanowires, in particular, that the
concentration of silver nitrate is below 0.1 M, a teaching that is
acknowledged by the Examiner. (FF3; Ans. 6.)
As to the Examiner's position that the '098 provisional application
does not disclose how to select a reaction condition to yield a silver
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nanowire having a desired shape and size as recited in claim 7, and
specifically, that the '098 provisional application does not make any
statements to suggest that the same adjustments disclosed for nanocubes
would work for nanowires, we disagree. (Ans. 6.) The '098 provisional
application makes clear that the concentration of silver nitrate is what is used
to select between nanocubes and nanowires. (FF3, FF4.) Because the '098
provisional is directed to nanoparticles, one of ordinary skill in the art would
understand that other conditions such as temperature and growth time to
select a desired size and shape would apply equally to nanocubes and
nanowires. (See FF3.)
The '349 Patent is consistent with our understanding of the '098
application, as the '349 Patent's disclosure specific to silver nanowires
references temperature and growth time as a means to control the production
of silver nanowires. (Col. 5, 11. 22-28.) In addition, Example 2 of the '349
Patent is directed to the synthesis of nanocubes, and Example 3 of the '349
Patent is directed to the synthesis of nanowires, where the only difference
between the two methods is the concentrations of silver nitrate and
poly(vinylpyrrolidone). (Col. 10, 11. 37----67.)
Accordingly, Sun 1 only qualifies as prior art under 35 U.S.C.
§ 102(a)(pre-AIA), because it was published less than a year before the
effective filing date of the claims on appeal in the '349 Patent. As a result,
the Examiner's rejection of claims 7, 9-11, and 13-20 under 35 U.S.C.
§ 102(b) is reversed. In addition, both the Sun Declaration and the Xia
Declaration contain statements that the work described in Sun 1 is that of the
inventors of the '349 Patent, and that the additional authors of Sun 1 were
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acting under the direction of Younan Xia and Yugang Sun. (Sun Deel.
paras. 3-7; Xia Deel., paras. 3-7.) The Examiner found similar statements
persuasive in withdrawing the rejection of claims 7, 9-11, and 13-20 under
35 U.S.C. § 102(a)(pre-AIA) as anticipated by Sun 2. (Ans. 4; Sun Deel.
paras. 8-10; Xia Deel., paras. 8-10.) Therefore, a rejection under
35 U.S.C. § 102(a)(pre-AIA) would be improper.
CONCLUSION
On this record, Appellant has demonstrated error in the Examiner's
position that the '098 provisional application does not provide support for
the nanowire limitations present in the claims on appeal.
DECISION
The Examiner's decision to reject claims 7, 9-11, and 13-20 under 35
U.S.C. § 102(b) is reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(±).
FOR PATENT OWNER:
DANIEL C. HIGGS
STOEL RIVES LLP
ONE UTAH CENTER
201 SOUTH MAIN STREET
SUITE 1100
SALT LAKE CITY, UT 84111
REVERSED
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Reexamination Control 90/013 ,318
Patent 7 ,585,349 B2
FOR THIRD-PARTY REQUESTER:
HOGAN LOVELLS US LLP
IP GROUP, COLUMBIA SQUARE
555 THIRTENTH STREET, N.W.
WASHINGTON, D.C. 20004
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