14430477 (P.T.A.B. Sep. 25, 2018)

Ex Parte Jing et al

Patent Trial and Appeal BoardSep 25, 2018

14430477 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/430,477 03/23/2015 32692 7590 09/27/2018 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Naiyong Jing 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. 70126US007 9213 EXAMINER CONIGLIO, AUDREA JUNE BUCKLEY ART UNIT PAPER NUMBER 1617 NOTIFICATION DATE DELIVERY MODE 09/27/2018 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NAIYONG JING, JUSTIN A. RIDDLE, XUAN JIANG, NARINA Y. STEPANOVA, CHRISTIANE STRERATH, FUXIA SUN, and XUE-HUA CHEN (APPLICANT: 3M INNOVATIVE PROPERTIES COMPANY) Appeal2017-010014 Application 14/430,477 1 Technology Center 1600 Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and RYAN H. FLAX, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This Appeal under 35 U.S.C. Â§ 134(a) involves claims 23-25 and 27- 34 (Br. 3).2 Examiner entered a rejection under 35 U.S.C. Â§ 103(a). We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellants identify "3M Company ... and its affiliate 3M Innovative Properties Company" as real parties in interest (Br. 3). 2 Pending claims 26 and 35--42 stand withdrawn from consideration (Br. 3). Appeal2017-010014 Application 14/430,477 STATEMENT OF THE CASE Appellants' disclosure "relates to compositions and articles having antimicrobial properties, and methods of making them" (Spec. 1: 6-7). Appellants' claim 23 is representative and reproduced below: 23. A method of making a coatable composition, the method compnsmg: providing a first composition comprising silica nanoparticles dispersed in an aqueous liquid vehicle, wherein the silica nanoparticles have a mean particle size of less than or equal to 45 nanometers, and wherein the first composition has a pH greater than 6; acidifying the first composition to a pH of less than or equal to 4 using inorganic acid to provide a second composition; and dissolving at least one metal compound in the second composition to provide the coatable composition, wherein said at least one metal compound comprises at least one of a silver compound, a zinc compound, or a copper compound. (Br. 6.) The claims stand rejected as follows: Claims 23-25 and 27-34 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Hager3 and MacDonald. 4 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? ANALYSIS Hager discloses a coating composition comprising "an aqueous dispersion, having a pH of less than 7 .5, of silica nanoparticles having [an] 3 Hager et al., US 2010/0092765 Al, published Apr. 15, 2010. 4 MacDonald, US 2012/0202684 Al, published Aug. 9, 2012. 2 Appeal2017-010014 Application 14/430,477 average particle diameter of 40 nanometers ... or less and additional components including coupling and complexing agents" such as a metal B- diketone complexing agent (Final Act. 5 5; see also Hager, Abstract). Hager discloses that "[ t ]he type of ... metal in the complexing agent is not particularly limited," wherein an "[ e ]xample[] of such metal complexing agents include ... bis(acetylacetonato )copper(II)" (Hager ,r 49; Ans. 5). Examiner finds that Hager discloses Appellants' "'acidifying the first composition' step" (Final Act. 5 (citing Hager ,r,r 14 and 29); see Ans. 3). Examiner finds that although, Hager discloses Appellants' claimed invention, including a complexing agent that is "a copper containing metal chelate compound ... , Hager does not provide sufficient motivation for selecting at least one of a silver, zinc, or copper compound to be added by dissolution to a second composition as ... recited" in Appellants' claimed invention (Final Act. 5). Examiner, therefore, relies on MacDonald to disclose silica nanoparticles coated with metal ions, such as copper, that are "useful in oral care applications or for instance the surface of a straw" (Final Act. 6 ( citing MacDonald ,r,r 3 7-3 8). Thus, based on the combination of Hager and MacDonald, Examiner concludes that "[i]t would have been primafacie obvious to one of ordinary skill in the art at the time the invention was made to add the copper ion functionalization for instance as taught by MacDonald to the silica nanoparticles of Hager, with a reasonable expectation of success," because "MacDonald teaches the desirability of odor neutralization provided by copper ion functionalization" (Final Act. 6). 5 Office Action mailed September 15, 2016. 3 Appeal2017-010014 Application 14/430,477 Appellants contend, however, that "MacDonald teaches away from acidifying the silica nanoparticle dispersion prior to combining it with metal cations (e.g., Cu, Ag, Zn cations)" and, therefore, conclude that "to maximize metal cation deposition on the silica nanoparticle one would not be motivated to acidify the silica dispersion to a pH of less than 4 as" required by Appellants' independent claims (Br. 4--5). We are not persuaded. As discussed above, Examiner's prima facie case of obviousness makes clear that Hager discloses Appellants' claimed method, including a disclosure of complexing agents, which may include a copper compound (see Final Act. 5; see also Ans. 3). As Examiner explains, MacDonald was relied upon to provide a reason for selecting a complexing agent within the scope of Hager that is a copper compound (see Final Act. 5---6; see also Ans. 3--4). CONCLUSION The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 23 under 35 U.S.C. Â§ I03(a) as unpatentable over the combination of Hager and MacDonald is affirmed. The rejection of claims 24, 25, and 27-34 are not separately argued and fall with claim 23. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 4