Ex Parte Williams et alDownload PDFPatent Trial and Appeal BoardJan 29, 201512283865 (P.T.A.B. Jan. 29, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/283,865 09/16/2008 Errol Williams 496.031US1 8493 97462 7590 01/29/2015 Mark A. Litman & Associates, P.A. 7001 Cahill Road, Ste. 15A Edina, MN 55439 EXAMINER PENNY, TABATHA L ART UNIT PAPER NUMBER 1712 MAIL DATE DELIVERY MODE 01/29/2015 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 ERROL WILLIAMS, CHRISTOPHER J. RUEB, WILLIAM A. HENDRICKSON, PAUL J. VERBANAC, and ROBERT G. BOWMAN ____________ Appeal 2013-003972 Application 12/283,865 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–13, 15, 17, and 19–26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is AVEKA, Inc. Br. 3. Appeal 2013-003972 Application 12/283,865 2 STATEMENT OF THE CASE The claimed subject matter relates to a method of providing a redispersible nanoparticle powder. Br. 16 (claim 1). The method involves surface treatment of the nanoparticles to enhance dispersibility of the particles in a carrier. Spec. 1:7–9, 8:4–8, 22:1–2. Claim 1—the sole independent claim—is representative of the subject matter on appeal and is set forth below (with paragraph formatting added and disputed limitations in bold): 1. A method of providing a redispersible nanoparticle powder comprising: a) providing a first dispersion of nanoparticles having surface hydroxyl groups; b) adding a non-metal-ester molecular reactant for the hydroxyl group into the first dispersion of nanoparticles having surface hydroxyl groups; c) reacting the reactant with the hydroxyl group to form individual, non-continuous sites having reaction product of the hydroxyl group and the reactant to form a surface treated nanoparticle; and d) drying the surface treated nanoparticle providing a non-aggregated powder of the surface treated nanoparticles such that when the dried, treated nanoparticle powder is redispersed as a second dispersion in a carrier or solvent having affinity for the non-metal-ester reactant product, a nano-sized particle is formed. Br. 15 (Claims Appendix). The prior art evidence relied upon by the Examiner in rejecting the claims on appeal is: Cole US 3,926,658 Dec. 16, 1975 Helmus US 2007/0048383 A1 Mar. 1, 2007 Appeal 2013-003972 Application 12/283,865 3 P. Davide Cozzoli et al., Low-Temperature Synthesis of Soluble and Processable Organic-Capped Anatase TiO2 Nanorods, 125 J. AM. CHEM. SOC. 14539–14548 (2003) (“Cozzoli”) Norio Nakayama & Toyoharu Hayashi, Preparation of TiO2 Nanoparticles Surface-Modified by Both Carboxylic Acid and Amine: Dispersibility and Stabilization in Organic Solvents, 317 COLLOIDS & SURFACES A: PHYSICOCHEM. ENG. ASPECTS 543–550 (2008) (available online December 4, 2007) (“Nakayama”). THE REJECTIONS 1. Claims 1–13, 15, 17, and 19–26 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Final Action 2–3. 2. Claims 1–10, 13, 15, 17, and 19–26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cozzoli in view of Cole, citing Nakayama as evidence of inherency. Id. at 4–6. 3. Claims 11–12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cozzoli in view of Cole, as applied to claim 1, and further in view of Helmus. Id. at 6–7. ANALYSIS Indefiniteness The Examiner determines that, despite the explanations provided by Appellants in the Specification and the Brief, the phrase, “non-metal-ester molecular reactant,” is unclear and renders the claims indefinite. Final Action 2–3; Ans. 2–3; see also Spec. 8:14–9:9; Br. 9–11. The Examiner identifies a number of respects in which this phrase is unclear, including: (1) whether the phrase requires an ester that does not contain a metal or whether it encompasses any compound that is not a metal-containing ester; Appeal 2013-003972 Application 12/283,865 4 (2) whether a non-metal-ester is required to be present prior to or only after reaction with the surface hydroxyl groups; and (3) which, if any, of the compounds identified on page 8 of the Specification is excluded and what, if any, additional compounds are excluded. Final Action 2–3; Ans. 2–3. After reviewing Appellants’ arguments in the Brief, the Final Action, the Examiner’s Answer, and the Specification, we are not persuaded that the Examiner reversibly erred in determining that the phrase, “non-metal-ester molecular reactant,” renders claim 1 indefinite. We sustain the indefiniteness rejection based on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Final Action and the Answer. We add the following for emphasis. Section 112 requires that the specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2. “As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). During prosecution, the burden of precise claim drafting is on the applicant as the applicant is in the best position to resolve ambiguities through amendment and argument. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989); see also Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Placing the claim-drafting burden on the applicant has the following procedural effect: [W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is Appeal 2013-003972 Application 12/283,865 5 ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear. In re Packard, 751 F.3d at 1311. We determine that, by identifying the three points of ambiguity listed above, the Examiner satisfies the requirement to issue a well-grounded rejection that identifies ways in which the phrase, “non-metal-ester molecular reactant,” in claim 1 is ambiguous, vague, incoherent, opaque, or otherwise unclear, thereby shifting the burden to Appellants to provide a satisfactory response. Id. For the reasons set forth in the Answer and further emphasized below, we determine that Appellants’ explanations are not sufficient to resolve the ambiguities identified by the Examiner. Regarding the first point of ambiguity, Appellants argue that the disputed limitation “requires the presence of an ester that is a ‘non-metal’ ester” and “[t]herefore metal esters are excluded and non-metal esters are specifically required.” Br. 10. As noted by the Examiner, however, the examples in the Specification include oleic acid, which is not an ester. Ans. 2; see Spec. 14:8. Consistent with the Examiner’s observation, dependent claim 10 recites that the reactant is selected from a group that includes oleic acid and many other compounds that are not esters. Br. 17 (claim 10). Appellants’ argument is inconsistent with the examples of a “non-metal- ester molecular reactant” disclosed in the Specification and dependent claim Appeal 2013-003972 Application 12/283,865 6 10 and is therefore not sufficient to resolve the ambiguity identified by the Examiner. Regarding the second point of ambiguity, Appellants contend that the disputed limitation “requires a reactant that is a ‘non-metal-ester,’” and that whether the reactant “later forms any form of an ester or remains as an ester is inconsequential to the process or the scope of the claims.” Br. 9 (emphasis omitted). As noted by the Examiner, however, the examples disclosed in the Specification include oleic acid, which is not an ester, but which can form an ester upon reaction with a surface hydroxyl group. Ans. 2. The same is true for several of the other example reactants disclosed in the Specification and listed in dependent claim 10. Spec. 14:6–9; Br. 17 (claim 10). The Specification therefore does not support Appellants’ interpretation that an ester must be present prior to, and not merely as a product of, the reaction with surface hydroxyls. Accordingly, Appellants’ explanation is not sufficient to resolve the ambiguity identified by the Examiner. Regarding the third point of ambiguity, Appellants first argue that “only metal esters are excluded by the claim language.” Br. 9. Appellants then direct our attention to the Specification, “where additional lists of excluded metal reactants that are not metal-esters is [sic, are] described.” Br. 11 (citing and quoting Published Application ¶ 22, corresponding to Spec. 8:14–9:9). Appellants’ arguments are contradictory, first asserting that only metal esters are excluded and then asserting that additional compounds that are not metal esters are also excluded. Id. at 9–10. The Examiner observes that, in unreacted form, none of the compounds listed at page 8 of the Specification is an ester or metal ester and that at least one of Appeal 2013-003972 Application 12/283,865 7 them does not form an ester upon reaction with a surface hydroxyl. Ans. 2– 3 (referring to the following compounds: n-propoxytriethoxy titanate, bis(diethylcitrato)di-n-propoxy zirconate, and 3- aminopropyltriethoxysilane). Appellants do not contest these observations. Accordingly, despite Appellants’ explanations provided in the Specification and Brief, it remains unclear which, if any, of the compounds identified on page 8 of the Specification are excluded and what, if any, additional compounds are excluded by the phrase, “non-metal-ester molecular reactant,” in claim 1. We sustain the indefiniteness rejection. Obviousness For purposes of evaluating patentability of the claims over the prior art, the Examiner construes the phrase, “non-metal-ester molecular reactant,” as encompassing any reactant that falls within the list of reactants in dependent claim 10, does not form a metal-ester or inorganic ester bond, and is not a silane. Final Action 2–3. For the sake of completeness and to avoid a piecemeal appeal, we address Appellants’ arguments against the obviousness rejections, applying the same construction as the Examiner. See Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991) (exercising discretion to reach art rejections despite indefiniteness where nature of case permitted). Appellants’ arguments are directed to independent claim 1 only. No substantive arguments are presented concerning the dependent claims, including separately rejected dependent claims 11–12. See Br. 12–14. As a consequence, the dependent claims stand or fall with independent claim 1. Appeal 2013-003972 Application 12/283,865 8 The Examiner finds that Cozzoli teaches a method of providing a redispersible nanoparticle powder embodying all elements of claim 1, except for non-continuous reaction sites and a drying step. Final Action 4–5 (citing Cozzoli 14541 col. 1, ll. 35–40 and col. 2, ll. 19–56). Regarding these claim elements, the Examiner determines that non-continuous reaction sites are inherently disclosed by Cozzoli, citing Nakayama as evidence of inherent disclosure, id. at 5 (citing Nakayama Fig. 5), and that drying the surface- treated particles of Cozzoli would have been obvious in view of Cozzoli and Cole, id. (citing Cozzoli 14541 col. 1, ll. 16–25 and Cole 1:59–61). Appellants contend that Cozzoli does not disclose surface hydroxyl groups or reaction with such hydroxyl groups and that obviousness of a drying step is not established by Cole. Br. 12–14. Upon consideration of the evidence presented in this Appeal and each of Appellants’ contentions, we are not persuaded that Appellants identify reversible error, and we determine that a preponderance of evidence supports the Examiner’s conclusion that the subject matter of Appellants’ claims is unpatentable over the applied prior art. We sustain the rejection of the appealed claims based on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Final Action and the Answer. We add the following for emphasis. Regarding surface hydroxyl groups and reaction with such hydroxyl groups, we adopt the Examiner’s detailed explanation of where and how these claim limitations are disclosed by Cozzoli, Ans. 3–5; see also Final Action 4–5, which is uncontested by Appellants who submit no reply brief. We determine that the Examiner’s findings are supported by a preponderance of the evidence, including Scheme 1 of Cozzoli, which shows Appeal 2013-003972 Application 12/283,865 9 titania nanocrystals with surface hydroxyl (-OH) groups. Cozzoli 14546 (Scheme 1, nanocrystals IIa, IIB, IIIa, and IIIb); see also id. at 14544 col. 2, 2nd para. (“surface O-H” are apparent from IR spectra of titania nanocrystals); id. at 14546, col. 2, last para. (discussing “surface density of -OX (X = R or H) moieties in the growing titania clusters” in Scheme 1). A preponderance of the evidence also supports the Examiner’s finding that Cozzoli discloses that oleic acid (OLEA)2 reacts with hydroxyl (OH) groups on the surface of the titania nanocrystals in a reversible hydrolysis reaction. Ans. 4; see, e.g., Cozzoli 14541 col. 2, 2nd full para. (“Upon small addition of fresh OLEA . . . complete solubility [in apolar solvent] could be recovered”); 14541 col. 2, 5th full para. (“OLEA could be removed and subsequently reattached onto the TiO2 surface upon several cycles of nanocrystal washing/OLEA addition”); id. at 14547, col. 1, last para. (“OLEA participates in a reversible, dynamic equilibrium on the nanocrystal surface”). We agree with the Examiner that the evidence submitted by Appellants3 reinforces, rather than refutes, the Examiner’s reasoning because both Baek and Cozzoli teach that TiO2 particles capped with oleate groups are soluble in nonpolar (apolar) solvents and removal of the oleate capping 2 Oleic acid is one of reactants listed in dependent claim 10. Br. 17; see also id. at 13 (“It is assumed that the oleic acid of Cozzoli is proposed as the ‘non-metal-ester molecular reactant’ from Cozzoli.”). 3 Seong Yong Baek et al., Synthesis of Highly Soluble TiO2 Nanoparticle with Narrow Size Distribution, 26 BULL. KOREAN CHEM. SOC., 1333–34 (2005) (“Baek”). Appeal 2013-003972 Application 12/283,865 10 results in TiO2 particles that are insoluble in such solvents. Ans. 4–5; Br. 12 (quoting Baek 1334 col. 1, ll. 16–18);4 Cozzoli 14541 col. 2, 2nd full para. Regarding the claimed drying step, we concur with the Examiner that there is no evidence to support Appellants’ contention that the spray drying of Cole would not be suitable for drying the nanoparticles disclosed in Cozzoli. Compare Br. 14 with Ans. 5. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Attorney argument cannot take the place of the evidence required to rebut prima facie obviousness.) We note that Appellants’ evidence provides additional support for obviousness of modifying Cozzoli to include a drying step. Baek 1334 col. 1, ll. 16–18 (oleate-capped TiO2 nanoparticles were “dried in a vacuum oven at room temperature”). Appellants argue that the rejection of claims 3–7 and 10 lacks evidentiary support, Br. 14, but they fail to elaborate or to address the Examiner’s specific findings and conclusions relating to those claims. Final Action 6; In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art” is not a substantive argument that requires claims be separately addressed); Ex parte Belinne, No. 2009- 004693, slip op. at 7–8, 2009 WL 2477843, at *3–4 (BPAI Aug. 10, 2009) (informative) (merely restating elements of claim and arguing that elements 4 The passage quoted by Appellants—“The dried TiO2 particles capped with oleate group were readily soluble in nonpolar solvents, such as toluene.”—is found at page 1334, col. 1, ll. 16–18 of Baek, not column 2, as cited by Appellants. Appeal 2013-003972 Application 12/283,865 11 are missing from the reference, without further explanation, is not persuasive to show error in the Examiner’s specific fact finding). We sustain the obviousness rejections. CONCLUSION OF LAW AND DECISION The rejections are 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). AFFIRMED bar Copy with citationCopy as parenthetical citation