Epshteyn, Albert et al.

Patent Trials and Appeals Board

Oct 7, 2020

14881241 - (D) (P.T.A.B. Oct. 7, 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.
14/881,241 10/13/2015 Albert Epshteyn 099026-US3 5935
26384 7590 10/07/2020
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/07/2020 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):
patent.docketing@nrl.navy.mil
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT EPSHTEYN and ANDREW P. PURDY
Appeal 2019-004808
Application 14/881,241
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
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 13 and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the Government
of the United States of America, as represented by the Secretary of the Navy.
Appeal Br. 2.
Appeal 2019-004808
Application 14/881,241
2
CLAIMED SUBJECT MATTER
Appealed claims 13 and 16 depend from withdrawn claims 1 and 12
and are directed to nanoparticles comprising a decomposition product of
metal hydride compounds, where the nanoparticle is made by the reaction of
a transition metal salt with an aluminum hydride compound and a boro-
hydride compound. Appeal Br. 2, 6. Appellant represents that the
nanoparticles may be useful in munitions. Id. at 3.
Claims 1, 12, 13, and 16 are reproduced below.
1. (withdrawn) A process comprising:
reacting a transition metal salt with a metal hydride
compound to produce one or more nanoparticles comprising a
decomposition product of the metal hydride compound;
wherein the metal hydride compound is an aluminum
hydride compound, a borohydride compound, or a gallium
hydride compound; and
wherein the reaction occurs in solution while being
sonicated at a temperature at which the metal hydride
compound decomposes.
12. (withdrawn) The process of claim 1, wherein the
transition metal salt is reacted with the aluminum hydride
compound and the borohydride compound.
13. A nanoparticle made by the method of claim 12.
16. The nanoparticle of claim 13, wherein the transition
metal salt is a titanium salt.
Appeal Br. 6 (Claims Appendix).
Appeal 2019-004808
Application 14/881,241
3
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Murphy US 2007 /0254225 A1 Nov. 1, 2007
REJECTION
The Examiner maintains the rejection of claims 13 and 16 under
35 U.S.C. § 103(a) as unpatentable over Murphy.
OPINION
The Examiner finds that Murphy teaches: a catalyst is made by
reacting a metal hydride with a transition metal salt; wherein the metal
hydride can be a mixture of sodium borohydride and lithium aluminum
hydride; and the transition metal salt can be titanium. Final Act. 2–3 (citing
Murphy ¶¶ 81, 82, 86). The Examiner acknowledges that “Murphy does not
teach nanoparticles.” Final Act. 3. The Examiner finds, however, that it
would have been expected that at least some of the catalyst is present as a
nanoparticle. Id. As support for this finding, the Examiner relies on
Murphy’s teachings that the catalyst is made and used “in solution” and that
a solid is formed from the solution. Id. (citing Murphy ¶¶ 81, 87). The
Examiner reasons that “a molecule in solution” falls within the broadest
reasonable definition of a nanoparticle and that nanoparticles would be
present “at some point” when going from a solution to a solid. Id.
Appellant focuses its patentability arguments on three aspects of the
claimed subject matter: decomposition product, nanoparticles, and
sonication. Appeal Br. 3–4. We address each of these aspects in turn.
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Application 14/881,241
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First, Appellant argues, “[t]here is no disclosure in Murphy that the
reaction forms a decomposition product of a metal hydride,” and “the Office
Action does not even allege that such a decomposition product is disclosed
in Murphy, either explicitly or inherently.” Appeal Br. 3.
Appellant’s argument does not persuade us to reverse the rejection.
As evidence of what the claim means by “decomposition,” the Examiner
directs us to paragraph 14 of Appellant’s Specification, which discloses in
pertinent part: “The metal hydride compounds can contain hydrogen-
bridging bonds, which may break during decomposition. This results in the
loss of some, but not necessarily all of the hydrogen in the nanoparticles in
the form of hydrogen gas.” Spec. ¶ 14. The Examiner also directs us to
Murphy’s disclosure that “[i]n embodiments in which a metal hydride—
transition metal salt catalyst system is employed, the metal hydride may be
added slowly, to prevent H2 build-up within the reaction system.” Murphy
¶ 87 (emphasis added). We agree with the Examiner that the Specification
shows that decomposition is associated with the breaking of hydrogen
bridging-bonds and the generation of hydrogen gas. Ans. 4; Spec. ¶ 14. We
further agree with the Examiner that Murphy’s disclosure of “H2 build-up
within the reaction system” evidences the breaking of metal-hydrogen bonds
and the decomposition of the metal hydride, consistent with the
Specification’s description of decomposition. Ans. 4; Murphy ¶ 87; Spec.
¶ 14.
In our view, the Examiner has provided a sound basis for believing
that the catalyst disclosed in Murphy comprises a decomposition product of
a metal hydride, as claimed. Murphy’s disclosure of hydrogen gas build-up
is strong evidence that decomposition is occurring. Howmedica Osteonics
Appeal 2019-004808
Application 14/881,241
5
Corp. v. Zimmer, Inc., 640 F. App’x 951, 958 (Fed. Cir. 2016) (unpublished)
(“A sound basis for believing in identity does not turn on absolute certainty;
rather, a sound basis for finding identity requires the Board to make
sufficient factual findings, such that it can reasonably infer that the prior art
product and that of the patent at issue are the same.”); In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”). Although Murphy
seeks to prevent the build-up of hydrogen gas, it is reasonable to infer that
decomposition is not entirely suppressed. Appellant does not argue or
provide evidence to the contrary.
Second, Appellant challenges the Examiner’s finding that at least
some of the catalyst would be expected to be present as nanoparticles. Final
Act. 4; Appeal Br. 4. Appellant argues that, in Murphy, “the reaction
product is formed in solution” and “is not formed as a solid that is later
dissolved while passing through a transitory nanoparticle state.” Appeal
Br. 4. Appellant contends it is not reasonable to interpret “nanoparticle” so
broadly as to encompass “a molecule in solution.” Id. (quoting Final Act. 3).
Responding to the Examiner’s assertion that nanoparticles would be present
“at some point,” Appellant argues “there is no evidence that such alleged
nanoparticles would have any more than a transitory existence.” Id. (quoting
Final Act. 3).
We agree with Appellant that it is not reasonable to interpret
“nanoparticle” so broadly as to encompass “a molecule in solution.” We are
nevertheless not persuaded to reverse the rejection. Murphy discloses that a
catalyst is “prepared from the reaction of a metal hydride and a transition
Appeal 2019-004808
Application 14/881,241
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metal salt, which may produce a black, granular material.” Murphy ¶ 81.
Murphy further discloses that the metal hydride is dissolved in a solvent
before it is added to the transition metal salt. Id. ¶ 87. From these teachings,
the Examiner reasonably infers that, “when making the black granular
product material even if the black granular material is itself not comprised of
nanoparticles, as the molecules or reaction product begin to agglomerate to
form this granular material it would necessarily pass through a transitory
state where it was comprised of nanoparticles in suspension.” Ans. 4–5.
Appellant agrees that nanoparticles would have “a transitory existence” in
Murphy’s process. Appeal Br. 4. A transitory nanoparticle is still a
nanoparticle and is sufficient to teach the claim limitation. See Power
Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315,
1337 (Fed. Cir. 2016) (that prior art meets claim limitation only during
startup mode—not normal operation—is irrelevant to the analysis of
anticipation, where the claim is not limited to normal operation); see also
Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016)
(“[C]ombinations of prior art that sometimes meet the claim elements are
sufficient to show obviousness.”).
Furthermore, in our view, the Examiner has provided a sound basis
for believing that the process disclosed in Murphy produces one or more
nanoparticles. See Howmedica, 640 F. App’x at 958; In re Spada, 911 F.2d
at 708. Murphy does not disclose the particle size of the “black, granular
material believed to be an active catalyst.” Murphy ¶ 81. Nevertheless, in
view of the similarities between Murphy’s disclosed process and the process
described in Appellant’s Specification, there is a sound basis for believing
that Murphy’s black, granular catalyst material includes at least one
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Application 14/881,241
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nanoparticle, and there is no contrary evidence from Appellant. Compare
Murphy ¶¶ 81, 82, 87 (disclosing preparation of black, granular material by
the reaction of a metal hydride, e.g., LiAlH4, and a transition metal salt by
dissolving the metal hydride in a solvent and adding it slowly to the
transition metal salt), with Spec. ¶ 26 (describing preparation of black
powder by the reaction of a metal hydride (LiAlH4) and a transition metal
salt (ZrCl4) by adding a solution of the metal hydride dropwise to the
transition metal salt under sonication). We note that Appellant’s
experiments produced a range of particle sizes, only some of which were
nanoparticles. Spec. ¶ 32 (“TEM images of sample 3 suggest that it is a
material made up of a mixture of particles that are heterogeneous in size,
with the bulk of it made up of larger particles with diameter on the order of
hundred(s) nanometers”); ¶ 33 (“there is TEM evidence of much smaller
nanoparticles that range from 1.8 nm to 7.4 nm in diameter”).
Third, Appellant argues that “sonication is used to create the presently
claimed nanoparticles having the decomposition product” and that “[n]o
such sonication is disclosed in Murphy.” After considering Appellant’s
argument, we agree with the Examiner that sonication is a product-by-
process limitation, and Appellant has not shown that the use of sonication
will result in a product that is materially different from the product taught by
Murphy. Ans. 4. See Biogen MA Inc. v. EMD Serono, Inc., No. 2019-1133,
2020 WL 5755468, at *5 (Fed. Cir. Sept. 28, 2020) (discussing “the
longstanding rule that ‘an old product is not patentable even if it is made by
a new process’” (citing Amgen Inc. v. Hoffman-La Roche Ltd., 580 F.3d
1340, 1366 (Fed. Cir. 2009)); In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985) (“If the product in a product-by-process claim is the same as or
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Application 14/881,241
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obvious from a product of the prior art, the claim is unpatentable even
though the prior art product was made by a different process.”). Appellant’s
Specification is equivocal about the causal relationship between sonication
and the formation of nanoparticles. Spec. ¶ 14 (“The use of sonication in
solution may cause nucleation of the decomposition products so that
nanoparticles are formed.”). There is no evidence, in the Specification or
elsewhere in the record, that sonication is necessary for the formation of
nanoparticles or that sonication contributes to the decomposition of the
metal hydride.
Accordingly, we sustain the Examiner’s rejection of claims 13 and 16.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed
13, 16 103(a) Murphy 13, 16
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