Ex Parte Bonnemann et al

Board of Patent Appeals and Interferences

Apr 8, 2010

10518703 (B.P.A.I. Apr. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte HELMUT BÖNNEMANN, WERNER BRIJOUX, RAINER
BRINKMANN, NINA MATOUSSEVITCH,
and NORBERT WALDOFNER

Appellants
_________________

Appeal 2010-001282
Application 10/518,703
Technology Center 1700
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Decided: 8 April 2010
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Before SALLY GARDNER LANE, RICHARD E. SCHAFER, and
RICHARD TORCZON, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellant’s claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
Appellant’s application is directed to magnetic nanocolloids and
particles. (Spec. 1).
The Examiner relied on the following patent references:
Name Number Date Abbreviation
Bönnemann et al. 6,351,304 March 11, 2003 B‘304
Bönnemann et al. 5,308,377 May 3, 1994 B‘377
The Examiner also relied upon Sun et al., “Monodisperse FePt Nanoparticles
and Ferromagnetic FePt Nanocrystal Superlattices,” SCIENCE, vol. 287, pp.
1989-92 (2000) (“S287”).
The Examiner rejected claims 1-2, 5-7, 9, and 12-13 under 35 U.S.C.
§ 103(a) over S287 and B‘377. Appellants discussed claims 12 and 13, as
a group, separately from the other rejected claims. We focus on claims 1
and 12 in our review. See 37 C.F.R. § 41.37(c)(vii).
The Examiner also rejected claim 10 under 35 U.S.C. § 103(a) over
S287, B‘377, and the admitted prior art in Appellant’s specification.
Finally, the Examiner rejected claims 3, 4, 8, 11, and 14-18 under 35
U.S.C. § 103(a) over S287, B‘377, and B’304. Appellants discussed claims
14-18, as a group, separately from the other rejected claims. We focus on
claims 3 and 14 in our review. See 37 C.F.R. § 41.37(c)(vii).
II. PRINCIPLES OF LAW
In determining whether subject matter is obvious
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[o]ften, it will be necessary for a court to look to interrelated teachings
of multiple patents . . . ; the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine
whether there was an apparent reason to combine the known elements
in the fashion claimed by the patent at issue. To facilitate review, this
analysis should be made explicit.

KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“[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.” In re Spada, 911 F.2d 705,708 (Fed. Cir. 1990).
III. FINDINGS OF FACT
1. Appellant’s claim 1 recites:
A process for the preparation of magnetic particles, said process
comprising decomposing low-valency compounds of the metals of the
magnetic particles in the presence of an organometallic compound of
a metal of group 13.

(App. Br. 20, Claims App’x).
2. S287 teaches preparing iron-platinum (FePt) nanoparticles by
reduction of platinum acetylacetonate and decomposition of iron
pentacarbonyl. (S287 abstract).
3. FePt is a magnetic material, wherein iron pentacarbonyl is a
low-valency metallic compound of FePt. (See Ans. 3).
4. S287 explains further that a diol or polyalcohol (such as 1,2-
hexadecanediol) is used to reduce a metal salt, such as platinum
acetylacetonate, in a “polyol process” and that thermal decomposition is
used to produce Fe from iron pentacarbonyl. These processes are said to
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make Pt and Fe particles available for association into a nanoparticle. (S287
1989, middle col. and FN 21).
5. In S287 the reduction of metal salts is accomplished with a diol
or a polyalcohol, such as long-chain 1,2-hexadecanediol, in the polyol
process. (S287 1989, middle col. and FN 21).
6. S287 does not teach reducing metal salts with any other
process.
7. S287 does not teach that the decomposition to prepare the
magnetic particles occurs in the presence of an organometallic compound of
a metal of group 13.
8. B’377 teaches preparing metal particles by forming complexes
with organoboron and/or organogallium complexing agents (where boron
and gallium are Group 13 elements). (B’377 col. 1, ll. 51-55, and col. 2, ll.
36-51).
9. B’377 teaches that the organoboron and/or organogallium
complexes allow metal hydrides to act as reducing agents for metal salts,
thus allowing metal or alloy powder to be recovered by simple filtration.
(B’377 col. 1, ll. 51-55, and col. 2, ll. 36-51).
10. B’377 teaches reducing metal salts with metal hydrides, not
with diol or polyalcohol as the reducing agent, as taught in S287.
11. Appellants’ claim 12 recites:
A monometallic or polymetallic magnetic particle having a
mean particle size, determined by TEM, of between 2 and 15 nm and
a particle size distribution with a standard deviation of not more than
1.6 nm.

(App. Br. 21; Claims App’x).
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12. S287 teaches FePt particles with a size that can be controlled
(“tunable”) from 3- to 10- nanometer diameter with a standard deviation of
less than 5%. (S287 abstract).
IV. ISSUE
Would there have been a reason for those in the art to have used an
organometallic compound of metal group 13 in the reduction and
decomposition reactions that produce FePt nanoparticles taught in S287?
Does S287 teach mono- or polymetallic particles of between 2 and 15
nm, with a particle size distribution with a standard deviation of not more
than 1.6 nm?
V. ANALYSIS
Appellants claim a process wherein low-valency compounds are
decomposed in the presence of organometallic compounds of group 13 of
the Periodic Table to form magnetic particles. (FF1 1). S287 teaches
preparing iron-platinum nanoparticles by reducing platinum acetylacetonate
and decomposing iron pentacarbonyl. (FF 2). In S287 the reduction of
metal salts is accomplished with a diol or a polyalcohol, such as long-chain
1,2-hexadecanediol, in a polyol process. (FFs 4 and 5). S287 does not teach
any other compounds or processes for reduction of metal salts. (FF 6). The
process taught in S287 differs from the claimed process because S287 does
not teach that the decomposition occurs in the presence of an organometallic
compound of group 13 (FF 7).

1 “FF” indicates Finding of Fact.
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B’377 teaches preparing metal particles using organoboron and/or
organogallium complexing agents. (FF 8). In the process taught in B’377,
the organoboron and/or organogallium complexes allow metal hydrides to
act as reducing agents for metal salts, thus allowing metal or alloy powder to
be recovered by simple filtration. (FF 9).
According to the Examiner, B’377 “uses a similar organometal agent
with the similar metal salts for producing the same metals or metal alloys in
powder or colloidal particles.” (Ans. 4). The Examiner concludes that it
would have been obvious to those in the art to use an organometallic
compound of Group 13 to get the advantage of recovery by simple filtration.
(Ans. 4). Furthermore, according to the Examiner, the reduction of platinum
acetylacetonate and decomposition of iron pentacarbonyl as taught by S287
is a metal hydride process and so is similar to the chemical reactions taught
in B’3772. (Ans. 10). Thus, the Examiner finds reason why those of skill in
the art would have combined the teachings of S287 and B’377.
Appellants disagree, arguing that B’377 teaches using metal hydrides
only as reducing agents, in contrast to the process in S287, which does not
use metal hydrides as reducing agents. (App. Br. 8). According to
Appellants, S287 and B’377 rely on different processes so that those of skill
in the art would not have had a reason to combine their teachings. (App. Br.
9).

2 The Examiner refers to B’304 when discussing the teaching of a metal
hydride process. (Ans. 10). We assume the reference should have been to
B’377, because discussion is in response to Appellants’ argument about
B’377 (see Ans. 9; App. Br. 7-8).
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Beyond saying they are “similar,” the Examiner does not explain why
those of skill in the art would have used the organometallic compounds of
B’377 in the process taught in S287. The processes taught in S287 and
B’377 are distinct: one relies on polyols, which are non-metal organic
compounds, to reduce, while the other relies on metal hydrides. We find no
indication in S287 that the polyols can be substituted with any other
reducing agents, let alone with metal hydrides. Similarly, we find no
indication in B’377 that metal hydrides can be used in the place of polyols as
reducing agents. The Examiner fails to explain how either reference
suggests such a substitution. While an express suggestion in the references
is not necessary to a conclusion of obviousness, a sufficient reason why one
skilled in the art would have modified the prior art to arrive at the claimed
invention is. See KSR, 550 U.S. at 418. The Examiner’s finding that the
reactions are “similar” is not sufficient reason. Without further explanation,
we are not persuaded that those in the art would have combined the
teachings of S287 and B’377 to make a process using an organometallic
compound of a metal of Group 13 in the decomposition reaction recited. See
KSR, 550 U.S. 418. Accordingly, the Examiner fails to present a prima facie
case for the obviousness of the claimed method.
The Examiner rejected Appellants’ claims 3 and 10 under 35 U.S.C.
§ 103(a) over S287, B’377, and B’304 or the admitted prior art in
Appellants’ specification, respectively. Appellants’ claim 3 requires that the
“mean particle size is established by the nature and concentration of the
organometallic compound” (App. Br. 20, Claims App’x), while Appellants’
claim 10 requires that the decomposing step of the process of claim 1 be
“effected by photolysis or sonochemically” (App. Br. 21, Claims App’x).
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Because both of these rejections are based on the prima facie case,
including the reason to combine the teachings of S287 and B’377, put forth
by the Examiner in regard to claim 1, these rejections were made in error.
Appellants’ claim 12 recites a magnetic particle within a recited range
of specific particle size and particle size distribution. (FF 11). S287 teaches
FePt magnetic particle that fall with the recited range of particle size and
particle size distribution. (FF 12). Thus, S287 teaches the claimed particle,
see Spada, 911 F.2d at 708, regardless of the process by which it is produced
(contra App. Br. 13). The Examiner did not err in rejecting claim 12 under
35 U.S.C. § 103(a). See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir.
2002) (“It is well settled that ‘anticipation is the epitome of
obviousness.’”(citation omitted)).
Appellants’ claim 14 recites the magnetic particle of claim 12, “which
is protected by aftertreatment with air.” (App. Br. 21, Claims App’x).
B’304 teaches that Fe colloids can be aftertreated with oxygen, a component
of air, to form protective shells, and also teaches that these shells are useful
in medical applications. (See B’304 col. 4, ll. 12-15). Appellants do not
dispute that it would have been obvious to those in the art to protect the
particles of claim 12 with aftertreatment with air, only that there would not
have been a reason to combine S287 and B’377 to render the process of
making the particles obvious. (See App. Br. 17-18). For the reasons stated
above, Appellants have not persuaded us that the Examiner erred in finding
the claimed particles to have been taught in the prior art.
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VI. CONCLUSION
The Examiner has not shown that there would have been a reason for
those in the art to use an organometallic compound of metal group 13 in the
reduction and decomposition reactions that produce FePt nanoparticles
taught in S287.
S287 teaches mono- or polymetallic particles of between 2 and 15 nm,
with a particle size distribution with a standard deviation of not more than
1.6 nm.
VII. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1-2, 5-7, and 9, and 12-13 under 35 U.S.C. §
103(a) over S287 and B‘377 is REVERSED;
the rejection of claims 12-13 under 35 U.S.C. § 103(a) over S287 and
B‘377 is AFFIRMED;
the rejection of claim 10 under 35 U.S.C. § 103(a) over S287, B‘377,
and the admitted prior art in Appellant’s specification is REVERSED;
the rejection of claims 3, 4, 8, and 11 under 35 U.S.C. § 103(a) over
S287, B‘377, and B’304 is REVERSED; and
the rejection of claims 14-18 under 35 U.S.C. § 103(a) over S287,
B‘377, and B’304 is AFFIRMED.
FURTHER ORDERED that no time period for taking any subsequent
action in connection with the appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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cc:

Kurt G. Briscoe
Norris, McLaughlin & Marcus, PA
875 Third Ave., 8th Floor
New York, NY 10022