Ex Parte McCants et al

Patent Trial and Appeal Board

Jul 12, 2016

13048217 (P.T.A.B. Jul. 12, 2016)

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.").
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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
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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).").
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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
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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
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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.
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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
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