Ex Parte McCants et alDownload PDFPatent Trial and Appeal BoardJul 12, 201613048217 (P.T.A.B. Jul. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/048,217 03/15/2011 22827 7590 07112/2016 DORITY & MANNING, PA POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 FIRST NAMED INVENTOR Dale A. Mccants 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. USC-165-CIP 8267 EXAMINER STANLEY, JANEL ART UNIT PAPER NUMBER 1767 MAILDATE DELIVERY MODE 07/12/2016 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 DALE A. MCCANTS and ANDREW M. HA YES Appeal2015-001735 Application 13/048,217 Technology Center 1700 Before MICHAEL P. COLAIANNI, JULIA HEANEY, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1--4, 6, 8-10, and 12-18. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, the real party in interest is the University of South Carolina. Appeal Br. 1. Appeal2015-001735 Application 13/048,217 STATEMENT OF THE CASE Appellants describe the present invention as relating to use of zinc- oxide nanoparticles combined with a base liquid to form a nanofluid. Appeal Br. 2. Appellants state that the resulting "nanofluid has good thermal properties without several of the drawbacks of previous nano fluids, such as copper (II) oxide nanofluids." Id. The Specification explains that the nanofluid could be used in a heat transfer or HV AC system. Spec. 3: 16- 4:2. Claim 1, reproduced below with emphases added, is the only independent claim on appeal and is illustrative of the claimed subject matter: 1. A nanofluid for use in a heat transfer system, the nanofluid compnsmg: nanoparticles suspended in a base liquid, the nanoparticles consisting o/zinc-oxide nanoparticles, wherein the nanoparticles have a nanoparticle concentration in the nanofluid of about 0.01 % to about 5% by volume, and wherein the nanoparticles have an average diameter of about 1 nm to about 500 nm, and further wherein the nanoparticles agglomerate in the base fluid to be about 2 to about 10 times the average diameter of the nanoparticles; and an antifoaming agent mixed with the base liquid. Appeal Br.2 14 (Claims Appendix, emphasis added). REFERENCES The Examiner relied upon the prior art below in rejecting the claims on appeal: Tung et al. (hereinafter "Tung") Hong et al. US 2007 /0034354 Al Feb. 15, 2007 US 2008/0302998 Al Dec. 11, 2008 2 In this decision, we refer to the Final Office Action mailed July 30, 2013 ("Final Act."), the Appeal Brief filed June 2, 2014 ("Appeal Br."), the Examiner's Answer mailed September 23, 2014 ("Ans."), and the Reply Brief filed November 24, 2014 ("Reply Br."). 2 Appeal2015-001735 Application 13/048,217 (hereinafter "Hong") Conard et al. (hereinafter "Conard") Das et al. (hereinafter "Das") US 2010/0154406 Al June 24, 2010 US 2012/0068326 Al Mar. 22, 2012 Kulkarni et al., Application of nanojluids in heating buildings and reducing pollution, 86 Applied Energy 2566-2573 (2009) (hereinafter "Kulkarni"). REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 1, 2, 4, 6, 8-10, and 12-17 under 35 U.S.C. § 102(b) as anticipated by Hong. Ans. 2. Rejection 2. Claim 3 under 35 U.S.C. § 103 as unpatentable over Hong in view of Das. Ans. 5. Rejection 3. Claim 18 under 35 U.S.C. § 103 as unpatentable over Conard in view of Hong. Ans. 6. Rejection 4. Claims 1, 2, 4, 6, 8, 10, and 12-17 as unpatentable over Tung in view of Hong. Ans. 8. Rejection 5. Claim 18 under 35 U.S.C. § 103 as unpatentable over Tung in view of Hong in further view of Kulkarni. Ans. 11. Rejection 6. Provisionally, claims 1--4, 6, 8-10, and 12-17 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 9, 10, 12-14, 16-18, 22, and 23 of copending Application No. 12/728,637 (issued as U.S. Patent No. 9,187,684 on November 17, 2015) in view of Hong. Ans. 12. Rejection 7. Provisionally, claims 1--4, 6, 8-10, and 12-17 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 9, 10, 12-14, 16-18, 22, and 23 of copending 3 Appeal2015-001735 Application 13/048,217 Application No. 12/728,637 (issued as U.S. Patent No. 9,187,684 on November 17, 2015) in view of Das. Ans. 12-14. ANALYSIS Rejection 1. The Examiner rejects claims 1, 2, 4, 6, 8-10, and 12-17 as anticipated by Hong. Hong is directed to a carbon nanoparticle- containing nanofluid. Hong Title, Abstract. In addition to carbon nanoparticles, Hong's nanofluid may include metal oxide nanoparticles such as zinc oxide. Hong i-fi-144, 78. Appellants argue that Hong cannot anticipate claim 1 based upon claim 1 's recitation of "nanoparticles suspended in a base liquid, the nanoparticles consisting of zinc-oxide nanoparticles." Appeal Br. 6. Appellants argue that this language requires that "any nanoparticles in the nanofluid must be zinc-oxide nanoparticles" such that the claim "specifically excludes the presence of other types of nanoparticles." Id. As explained below, we agree with Appellants' claim construction. In patent parlance, "consisting of' is a transitional claim phrase meaning that the claimed invention contains only what is expressly set forth in the claim. Vehicular Techs. Corp. v. Titan Wheel Int'!, Inc., 212 F.3d 1377, 1382-83 (Fed. Cir. 2000). When "consisting of' follows a recited claim element rather than following the claim's preamble, "it limits only the element set forth in that clause; other elements are not excluded from the claim as a whole." MPEP 2111.03; see also Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986) ("The district court correctly observed that the phrase 'consisting of' appears in clause (a), not the preamble of the claim, and thus limits only the element set forth in clause (a)."). 4 Appeal2015-001735 Application 13/048,217 Here, the Examiner erred by emphasizing the inclusive transitional phrase "comprising" in claim 1 's preamble while not recognizing that the "consisting of' recitation limits the recited "nanoparticles suspended in a base liquid." While the word "comprising" following the preamble means that the recited nanofluid may include unrecited elements, the "consisting of' recitation means that the recited "nanoparticles suspended in a base liquid" cannot include anything except for the recited "zinc-oxide nanoparticles." Here, Hong's "nanoparticles suspended in base fluid" include carbon nanoparticles. Hong Abstract; Appeal Br. 5. The Examiner does not reach any contrary findings of fact. Final Act. 3--4; Ans. 14--16. While the Examiner is correct that the carbon nanoparticles comprise part of the recited nanofluid (id. at 3), this does not negate that the carbon nanoparticles fall within the recited category of "nanoparticles suspended in base liquid." Because claim 1 requires that the nanoparticles suspended in base liquid "consist of' zinc-oxide, Hong's nanoparticles including carbon do not fall within the scope of claim 1. In other words, the "nanoparticles suspended in the base fluid" of Hong include carbon nanoparticles, and Hong therefore does not meet the recited limitations of claim 1. Accordingly, we do not sustain the Examiner's rejection of claim 1 based on anticipation by Hong. Likewise, we do not sustain the Examiner's rejections of claims 2, 4, 6, 8-10 and 12-17 because each of those claims depend from claim 1. Rejection 2. The Examiner rejects dependent claim 3 as obvious over Hong in view of Das. Without expressly referring to claim 3, Appellants argue that all dependent claims are patentable over Hong. Appeal Br. 6. The Examiner's rejection does not appear to find that Das teaches nanoparticles suspended in a base fluid where the only nanoparticles in the 5 Appeal2015-001735 Application 13/048,217 base fluid are zinc-oxide. Final Act. 5---6; Ans. 16. We therefore do not sustain this rejection for the reasons explained above. Rejection 3. The Examiner rejects claim 18 over Conrad in view of Hong. The Examiner states that Conrad does not recite the nanofluid as claimed and relies on Hong to meet this element. Final Act. 7; Appeal Br. 16. Thus, for the reasons explained above, we do not sustain this rejection. Rejection 4. The Examiner rejects claims 1, 2, 4, 6, 8, 10, and 12-17 as unpatentable over Tung in view of Hong. Appellants argue that Tung "expressly teaches that their protective agent prevents congregations of the nanoparticles" and that it therefore does not meet claim 1 's recitation that "the nanoparticles agglomerate in the base fluid to be about 2 to about 10 times the average diameter of the nanoparticles." Appeal Br. 10-11, 14. The preponderance of the evidence supports Appellants' position. Tung teaches use of a protective agent which "can be selected from the group comprising of [sic] citric acid, citrate, tannin, polyvinyl alcohol, polyvinyl pyrrolidone, quaternary ammonium salt, and any suitable mixture thereof." Tung i-f 14. Tung explains that the protective agent "can prevent congregations of the nanoparticles." Id. at i-f 12. Tung's use of the protective agent to "avoid" congregations allows the working fluid to "circulate without blocking." Id. at i-f 16. The Examiner states that Tung is silent as to the recited nanoparticle agglomeration requirement but maintains that Tung will necessarily or inherently have this property because "[a] chemical composition and its properties are inseparable .... " Final Act. 9-10; Ans. 8-9. Tung's chemical composition, however, is not the same as that of claim 1 because Tung includes the protective agent which tends to prevent agglomeration. Although the Examiner takes the position that Tung's protective agent is 6 Appeal2015-001735 Application 13/048,217 equivalent to the surfactant of the instant application as recited in claim 8 (Final Act. 9; Ans. 17), we are not persuaded that a preponderance of the evidence supports this point. See Tung i-f 14 (identifying potential protective agents). Based upon the present record, we therefore do not sustain the Examiner's rejection of claim 1 based on Tung in view of Hong. Likewise, we do not sustain the Examiner's rejection of claims 2, 4, 6, 8, 10, and 12- 1 7 based upon Tung in view of Hong because those claims depend from claim 1. Rejection 5. The Examiner rejects claim 18 as obvious over Tung in view of Hong in further view of Kulkarni. Ans. 11. The Examiner does not find that the Kulkarni addresses nanoparticle agglomeration. Thus, for the reasons explained above, we do not sustain the Examiner's rejection of claim 18. Rejections 6 and 7. Appellants do not dispute the Examiner's nonstatutory obviousness-type double patenting rejections. Reply Br. 6, n. 1. Rather, Appellants agree to file terminal disclaimers to overcome the obviousness-type double patenting rejections. We therefore sustain these rej ections3. DECISION For the above reasons, we reverse the Examiner's rejection of (1) claims 1, 2, 4, 6, 8-10, and 12-17 under 35 U.S.C. § 102(b) as anticipated by Hong, 3 Appellants should note that because the applications subject to these provisional obviousness-type double patenting rejections have issued as U.S. Patents, the Examiner's provisional rejections have become non-provisional obviousness-type double patenting rejections over the corresponding issued U.S. Patents. 7 Appeal2015-001735 Application 13/048,217 (2) claim 3 under 35 U.S.C. § 103 as unpatentable over Hong in view of Das, (3) claim 18 under 35 U.S.C. § 103 as unpatentable over Conard in view of Hong, (4) claims 1, 2, 4, 6, 8, 10, and 12-17 as unpatentable over Tung in view of Hong, and (5) claim 18 under 35 U.S.C. § 103 as unpatentable over Tung in view of Hong in further view of Kulkarni. We affirm the Examiner's provisional rejection of (6) claims 1--4, 6, 8-10, and 12-17 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 9, 10, 12-14, 16-18, 22, and 23 of copending Application No. 12/728,637 in view of Hong, and (7) claims 1--4, 6, 8-10, and 12-17 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 9, 10, 12-14, 16-18, 22, and 23 of copending Application No. 12/728,637 in view of Das. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation