2019005241 (P.T.A.B. Nov. 4, 2020)

JAPAN SCIENCE AND TECHNOLOGY AGENCY

Patent Trials and Appeals BoardNov 4, 2020

2019005241 (P.T.A.B. Nov. 4, 2020)

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. 14/344,840 03/13/2014 Hiroshi Kitagawa 880651-0001-US00 7711 134795 7590 11/04/2020 MICHAEL BEST & FRIEDRICH LLP (DC) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER WU, JENNY R ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 11/04/2020 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): DCipdocket@michaelbest.com nbenjamin@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI KITAGAWA and KOHEI KUSADA Appeal 2019-005241 Application 14/344,840 Technology Center 1700 Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and JULIA HEANEY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HEANEY. Opinion Dissenting In Part filed by Administrative Patent Judge HOUSEL. HEANEY, Administrative Patent Judge. Appeal 2019-005241 Application 14/344,840 2 DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 6, 8, 9, and 14–24.2 See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. CLAIMED SUBJECT MATTER The claims are directed to ruthenium nanoparticles with an essentially face-centered cubic structure. Spec. ¶ 1. Claims 1, 9, and 14 are independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Ruthenium nanoparticles consisting essentially of a face-centered cubic structure, wherein the ruthenium nanoparticles consist of ruthenium, and wherein the ruthenium nanoparticles have at least one peak of diffraction angle 2ϴ from about 46° to about 48° from (200) plane in X-ray diffraction with CuKα rays. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Japan Science and Technology Agency, the assignee of record. Appeal Br. 3. 2 Claims 3–5, 7, and 10–13 have been withdrawn from consideration. Non- Final Act. 2. Appeal 2019-005241 Application 14/344,840 3 REFERENCES The prior art upon which the Examiner relies is: Name Reference Date Vanheusden US 2007/0034052 A1 Feb. 15, 2007 Joo Nano Letters, vol. 10, pp 2709–2713 June 22, 2010 Wessells US 2012/0328936 A1 Dec. 27, 2012 Kitagawa US 9,273,378 B2 Mar. 1, 2016 REJECTIONS The Examiner provides the following new grounds of rejection: 1. Claims 1, 2, 6, 8, and 14–20 under 35 U.S.C. § 102(b) as being anticipated by Joo. Ans. 4–6. 2. Claims 9 and 24 under 35 U.S.C. § 102(b) as being anticipated by Joo, as evidenced by Wessells. Id. at 6. 3. Claims 21–23 under 35 U.S.C. § 103(a) as being unpatentable over Joo, as evidenced by Wessells. Id. at 6–7. The Examiner maintains the following rejections on appeal: 4. Claims 17, 20, and 23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Non-Final Act. 3. 5. Claims 1, 2, 6, 8, and 14–20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Joo and Vanheusden. Id. at 4–7. 6. Claims 9 and 21–24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Joo, Vanheusden, and Wessells. Id. at 7–8. Appeal 2019-005241 Application 14/344,840 4 7. Claims 1, 2, 6, 8, and 14–20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Joo and Kitagawa. Id. at 8–9. 8. Claims 9 and 21–24 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Joo, Kitagawa, and Wessells. Id. at 9. OPINION Rejections 1–3 In Rejection 1, the Examiner finds that Joo discloses ruthenium nanoparticles made from a precursor ruthenium compound. Ans. 4. The Examiner finds Joo “expressly discloses larger nanoparticles showed [the] mixed phase of fcc [face-centered cubic] and hcp [hexagonal close-packed] structures.” Id. The Examiner determines that the claims do not exclude the presence of hcp ruthenium particles and are directed to individual ruthenium nanoparticles having an fcc structure. Id. The Examiner finds that “[e]ach of the individual ruthenium nanoparticles” of Joo “consists essentially of only that fcc structure, and therefore does not contain any other structures – including ruthenium nanoparticles having an hcp structure – that would materially affect it.” Id. In other words, the Examiner interprets Joo as disclosing a mixture of ruthenium nanoparticles having both hcp and fcc structures and claim 1 as directed to individual ruthenium nanoparticles having an fcc structure. The Examiner relies on the same reasoning in Rejections 2 and 3. Id. at 6–7. Appellant addresses Joo’s teaching of a “mixed phase” of fcc and hcp structures by arguing this means “Joo’s nanoparticles comprise both hcp and fcc structures and do not ‘consist essentially of’ fcc structures.” Appeal Br. 8. Having considered Appellant’s arguments, we agree that, on this record, Appellant has identified a reversible error. Joo discloses that its Appeal 2019-005241 Application 14/344,840 5 nanoparticles have a polycrystalline nature. Joo, 2710. This means the nanoparticles include multiple crystals, which could have the same crystal structure (e.g., fcc or hcp) or different crystal structures. As the Examiner finds, Joo further discloses “it was observed that the small Ru NPs [nanoparticles] exhibit diffraction lines corresponding to the hexagonal close-packed structure, whereas bigger NPs show the mixed phase of face- centered cubic and hexagonal close-packed structures.” Id. Therefore, Joo’s disclosure of a “mixed phase of face-centered cubic and hexagonal close- packed structures” is not a disclosure of a mixture of ruthenium nanoparticles having the hcp structure and ruthenium nanoparticles having the fcc structure, as the Examiner finds, but a disclosure of ruthenium nanoparticles having a mixture of hcp and fcc structures (i.e., multiple crystals having a mixture of different phases). Id. As a result, Joo does not disclose ruthenium nanoparticles consisting essentially of a face-centered cubic structure, as independent claims 1 and 9 recite, or ruthenium nanoparticles consisting of a face-centered cubic structure, as independent claim 14 recites. Accordingly, we reverse Rejections 1–3. Rejection 4 The Examiner finds claims 17, 20, and 23 fail to comply with the written description requirement. Non-Final Act. 3. Appellant does not respond to this rejection. See Appeal Br. 6. We, therefore, summarily affirm the rejection of claims 17, 20, and 23 for failure to comply with the written description requirement. Rejections 5 and 7 Appeal 2019-005241 Application 14/344,840 6 For Rejection 5, the Examiner finds Joo discloses ruthenium nanoparticles but does not expressly teach that the nanoparticles consisting essentially of an fcc structure. Non-Final Act. 4. However, the Examiner finds that the claimed fcc structure is due to the composition of the nanoparticles and the process of making them. Id. To that end, the Examiner finds Joo discloses a process using a solution of Ru (III) acetylacetonate, polyvinylpyrrolidone (PVP), and ethylene glycol. Id. The Examiner further finds the process uses the same ratio of ruthenium to PVP and the same heat treatment (i.e., first heated at 18°C for twenty minutes and then heated at 180°C for two hours under an argon atmosphere) as Appellant’s Example 7. Ans. 8. The Examiner finds that Joo’s process differs from Appellant’s process, such as Appellant’s Example 7, because Joo uses ethylene glycol instead of triethylene glycol. Non-Final Act. 5; Ans. 8. The Examiner finds Vanheusden discloses a process of making nanoparticles, such as ruthenium nanoparticles, by mixing a solution of a metal compound, such as ruthenium (III) acetylacetonate, with a heated solution of a polyol and a vinyl pyrrolidone polymer, such as PVP, at a temperature similar to Joo’s process temperature. Non-Final Act. 5. The Examiner further finds Vanheusden discloses that the polyol can be ethylene glycol or triethylene glycol and, thus, Vanheusden demonstrates that ethylene glycol and triethylene glycol are functional equivalents in a method similar to Joo’s process. Id. The Examiner also finds that Joo varies experimental factors, such as the type of polyol solvent, when synthesizing its ruthenium nanoparticles. Id.3 3 Joo discloses using either ethylene glycol or butanediol as a solvent. Joo Experimental Section, 4. Appeal 2019-005241 Application 14/344,840 7 The Examiner concludes it would have been obvious to substitute triethylene glycol for ethylene glycol in Joo’s process due to the functional equivalence of these substances. Id. The Examiner reasons that the process resulting from this modification would have been the same as Appellant’s process (e.g., Example 7) and, therefore, the claimed structure limitation (i.e., ruthenium nanoparticles having the fcc structure) would have been a natural result. Id. at 5–6; Ans. 8. In Rejection 7, the Examiner cites the reasoning of Rejection 5 but cites Kitagawa instead of Vanheusden as showing the functional equivalence between ethylene glycol and triethylene glycol. Non-Final Act. 8–9. Appellant argues that we should reverse the rejections because Joo’s nanoparticles include both hcp and fcc structures and one of ordinary skill in the art would not have recognized, in view of the disclosures of the applied references, that substituting triethylene glycol for ethylene glycol would have resulted in the claimed invention. Appeal Br. 7–10. Having considered Appellant’s arguments, we agree that on this record, that the Examiner has not provided a sufficient rationale to explain why it would have been obvious for one of ordinary skill in the art to have modified Joo’s process and thereby produce a different product (i.e., ruthenium nanoparticles having the fcc structure). To support the reasoning that proposed combinations would have necessarily resulted in the claimed invention (i.e., ruthenium nanoparticles having an fcc structure), the Examiner cites In re Best, 562 F.2d 1252 (CCPA 1977) and In re Spada, 911 F.2d 705 (Fed. Cir. 1990). Rejections 5 and 7, however, occur in the context of § 103. Although “[i]nherency may supply a missing claim limitation in an obviousness analysis,” “the concept Appeal 2019-005241 Application 14/344,840 8 of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014). “A party must . . . meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed in the prior art.” Id. at 1195–96. Here, the Examiner reasons that modifying Joo’s process in view of either Vanheusden or Kitagawa to use triethylene glycol would have resulted in the same process as Appellant’s and, thus, would have produced ruthenium nanoparticles with the same microstructure. As noted above, Joo discloses ruthenium nanoparticles having a mixture of fcc and hcp structures. Joo, 2710. The Examiner does not direct us to a suggestion in any of the applied references that ruthenium nanoparticles having only the fcc microstructure would have been desirable or advantageous. The Examiner cites Vanheusden and Kitagawa for a teaching of functional equivalence between ethylene glycol and triethylene glycol when making ruthenium nanoparticles, or when simply making nanoparticles. But Vanheusden and Kitagawa do not teach that using a different solvent would result in a different microstructure (e.g., the fcc structure), or that such a change in microstructure would have been desirable or otherwise advantageous. Therefore, the Examiner’s functional equivalence rationale is insufficient to explain why it would have been obvious for one of ordinary skill in the art to substitute triethylene glycol for ethylene glycol in Joo’s process so the modification would have naturally resulted in ruthenium Appeal 2019-005241 Application 14/344,840 9 nanoparticles having only the fcc structure, which is a different product than what Joo discloses. Accordingly, we reverse Rejections 5 and 7. Rejections 6 and 8 These rejections are based on the same deficiencies discussed above for Rejections 5 and 7, and the Examiner does not rely upon Wessells for any disclosure that remedies the deficiencies in Rejections 5 and 7. Accordingly, for the reasons discussed above, we also reverse Rejections 6 and 8. CONCLUSION The rejections are affirmed in part. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6, 8, 14–20 102 Joo 1, 2, 6, 8, 14–20 9, 24 102 Joo, Wessells 9, 24 21–23 103 Joo, Wessells 21–23 17, 20, 23 112, first paragraph 17, 20, 23 1, 2, 6, 8, 14–20 103 Joo, Vanheusden 1, 2, 6, 8, 14–20 9, 21–24 103 Joo, Vanheusden, Wessells 9, 21–24 1, 2, 6, 8, 14–20 103 Joo, Kitagawa 1, 2, 6, 8, 14–20 9, 21–24 103 Joo, Kitagawa, Wessells 9, 21–24 Appeal 2019-005241 Application 14/344,840 10 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome: 17, 20, 23 1, 2, 6, 8, 9, 14–24 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. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART Appeal 2019-005241 Application 14/344,840 11 HOUSEL, Administrative Patent Judge, dissenting in part. I concur completely with the majority decision with respect to the Examiner’s Rejections 1–4. However, I dissent, respectfully, from the majority’s reversal of the Examiner’s Rejections 5–8 based on the combined teachings of Joo and either one of Vanheusden and Kitigawa, alone, or further combined with Wessels. In my view, the Examiner has sufficiently established that the limitation at issue, “[r]uthenium nanoparticles consisting essentially of a face-centered cubic structure” as recited in claim 1, is the natural result of the combination of elements explicitly disclosed in the prior art. PAR Pharm., 773 F.3d at 1195–96. As the Examiner finds, the only difference between Joo’s and Appellant’s processes is that Joo uses ethylene glycol, whereas Appellant uses triethylene glycol. However, the Examiner finds that both Vanheusden and Kitigawa teach the known equivalence of ethylene glycol and triethylene glycol in the production of metallic nanoparticles including ruthenium nanoparticles. Therefore, in my view, the Examiner has established that it was prima facie obvious to have substituted triethylene glycol for ethylene glycol in Joo’s process for producing ruthenium nanoparticles. Because such a modified process is the same as the process Appellant discloses for producing the claimed ruthenium nanoparticles, the product of Joo’s process using triethylene glycol would necessarily be the same as the claimed product produced in Appellant’s product. In other words, ruthenium nanoparticles consisting essentially of fcc-structure is the natural result of the combination of elements explicitly disclosed in the prior art, thus establishing a prima facie case of obviousness. Appeal 2019-005241 Application 14/344,840 12 Nevertheless, the majority seems to add the additional burden on the Examiner to establish “a suggestion in any of the applied references that ruthenium nanoparticles having only the fcc microstructure would have been desirable or advantageous.” Supra 8. In my view, this additional burden is not required by the controlling precedent, cited above, on inherency in the context of obviousness. I recognize that the substitution of one known element for another may not be obvious where such a substitution yields an unpredictable or unexpected result. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”). However, in my view, the record before us fails to establish that the substitution of triethylene glycol in Joo’s process yields an unpredictable or unexpected result. Here, Appellant provides the Declaration under 37 C.F.R. § 1.132 of Dr. Toshiharu Teranishi, wherein Declarant states that “no one has expected that the fcc Ru nanoparticles are superior in catalytic activity in carbon monoxide (CO) oxidation reaction to hcp Ru nanoparticles,” and directs attention to Figure 12. Decl. ¶ 5. However, Figure 12 does not compare Joo’s mixed phase Ru nanoparticles to Appellant’s fcc-structure Ru nanoparticles. As Declarant states, Joo’s “mixed phase requires a core hcp structure of Ru” (Decl. ¶ 4), suggesting that Joo’s Ru nanoparticles have a surface fcc-structure. Because those skilled in the art would have reasonably expected catalytic activity to be surface dependent, an ordinary artisan would have had a reasonable expectation that Joo’s Ru nanoparticles would Appeal 2019-005241 Application 14/344,840 13 have a similar catalytic performance to Appellant’s. Appellant fails to direct our attention to any other evidence of an unexpected result. In addition, though Declarant establishes that the prior art, particularly Joo and Vanheusden, fails to suggest a correlation between reducing agents, such as between ethylene glycol and triethylene glycol, and the resulting crystal structure of the Ru nanoparticles (Decl. ¶ 6), in my view the crystal structure of the Ru nanoparticles is not the unexpected result precedent requires. A contrary view would all but eviscerate any possibility for inherency in the context of obviousness. Inherency, by its very nature, is an undisclosed, yet necessarily present, feature. Indeed, where an examiner establishes a reasonable belief that a property or characteristic recited in the claims, but not disclosed in the prior art, would have been inherent to the combined teachings of the prior art, the burden shifts to applicant to show that this property or characteristic is not the natural result of the combination of elements explicitly disclosed in the prior art. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Accordingly, in my view, Appellant has not identified reversible error in either the Examiner’s findings or conclusion of obviousness in any of Rejections 5–8. On the present record, therefore, I respectfully dissent as to the reversal of these rejections.