Ex Parte O

Patent Trials and Appeals Board

May 29, 2014

11897899 - (D) (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD

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Ex parte SHAWN MICHAEL O’MALLEY
__________

Appeal 2012-005621
Application 11/897,899
Technology Center 2800
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Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
21-36. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to processes for making light-
polarizing articles that include metal nanorods (Spec. para. [0001]).

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Claim 21 is illustrative:
21. A process for making a light-polarizing article comprising:
(1) providing a plurality of nanorods produced from the deposition of
an elemental metal onto a DNA template polymer;
(2) mixing the nanorods with a batch mixture of a glass material;
(3) treating the material resulting from step (2) to form a continuous
glass material having the nanorods distributed therein; and
(4) stretching the glass resulting from step (3) such that a plurality of
the nanorods align in the same direction inside the bulk of the glass.

Appellant appeals the following rejections:
1. Claims 21, 23-27, 29-32, and 34-36 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Borrelli et al. (EP 0 105 701,
published Sept. 29, 1982) in view of Dai et al. (US 2009/0052029 A1,
published Feb. 26, 2009) and Ivanisevic et al. (US 2005/0158763 A1,
published Jul. 21, 2005).
2. Claims 22, 28, and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Borrelli in view Dai, Ivanisevic and Allemand et al.
(US 2008/0143906 A1, published Jun. 19, 2008).

Appellant’s arguments focus on the subject matter common to claims
21, 26, and 32 (App. Br. 3-6). We select claim 21 as representative.
Appellant does not advance any argument regarding claims 22, 28, and 33
under rejection (2) (App. Br. 6). Claims 22, 28, and 33 will stand or fall
with our analysis regarding claim 21.

ISSUE
Did the Examiner reversibly err in concluding that it would have been
obvious to substitute the nanorods of Dai and Ivanisevic for the silver
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particles in Borrelli in order to provide specific useful optical properties to
the material? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
The Examiner’s findings regarding Borrelli, Dai, and Ivanisevic are
located on pages 4-6 of the Answer. The Examiner finds that Borrelli
discloses the limitations of claims 21, 26, and 32, except for “explicitly
stating that the nanoparticles are nanorods produced from the deposition of
an elemental metal onto a DNA template polymer; nanorods produced by
dip pen nanolithography; or polymer synthesized nanorods” (Ans. 5). The
Examiner finds that Dai teaches nanorods/nanowires are a known
nanoparticle shape which is stretched to provide useful optical properties
(Ans. 5). The Examiner finds that Ivanisevic teaches that it is known to
produce polymer synthesized nanorods/nanowires by depositing elemental
metal onto a DNA template polymer by dip pen nanolithography (Ans. 5).
The Examiner concludes that it would have been obvious to use Dai’s
nanorods formed by Ivanisevic’s methods as the nanoparticles in Borrelli to
provide specific useful optical properties as taught by Dai (Ans. 5). The
Examiner finds that using Ivanisevic’s methods to form the nanorods would
have provided further control and manipulation of the nanorods in order to
adapt them to particular applications (Ans. 5).
Appellant argues that combining the teachings of Dai and Ivanisevic
with Borrelli would not have been obvious because doing so would have
changed the principle of operation of Borrelli (App. Br. 4). Appellant
contends that Borrelli’s process requires heat elongation of silver halide
particles for achieving the final properties such that Borrelli teaches away
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from substituting elemental metal nanorods for Borrelli’s silver halide
particles (App. Br. 5). Appellant argues that substituting elemental metal
nanorods for Borrelli’s silver halide particles would have prevented Borrelli
from achieving its desired final properties. Id.
While Borrelli does teach that the heating steps are critical to
achieving the desired optical properties for glass containing silver halide
nanoparticles (Borrelli, 19:20-22), Borrelli further teaches that the process
parameters are applicable to any glass that contains silver halide particles
(Borrelli, 21:15-21). In other words, the particular process parameters are
vital only when silver halide particles are used. If other types of
nanoparticles are employed different process parameters would have been
used. Indeed, Borrelli discloses that “[v]irtually any glass containing silver
metal particles may be made polarizing if it is stretched at a temperature near
its softening point . . . with sufficient tensile stress to elongate the particles”
(emphasis added) (Borrelli, 14:1-5). While Borrelli teaches that forming
polarizing glass with silver metal particles requires high stresses, which
Borrelli’s invention seeks to address, it would have been within the skill of
the ordinary artisan to determine suitable stresses to form the polarizing
glass using silver metal particles such as nanorod-shaped particles.
Appellant has not established that substituting Dai’s and Ivanisevic’s
nanorods for Borrelli’s silver halide particles would have changed the
principle of operation of the glass. Rather, as pointed out by the Examiner,
substituting Dai’s and Ivanisevic’s nanorods for Borrelli’s silver halide
particles would have involved a change in process parameters that would
have been within the skill of the ordinary artisan (Ans. 7). The ultimate
function or principle of operation of the glass would have remained: light
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polarization. Indeed, Dai discloses that the nanorods may be used to affect
optical properties that include polarization of the sheets (Dai, paras. [0034],
[0069]). Accordingly, Appellant has not established that the combination
would have changed the principle of operation of Borrelli’s glass.
On this record, we affirm the Examiner’s § 103 rejections.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
ORDER
AFFIRMED

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