Ex Parte Holzer et al

Patent Trial and Appeal Board

Aug 11, 2016

10493063 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/493,063 0612912004
13897 7590 08/15/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Susanne Holzer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4565-P24962 1075
EXAMINER
BROWN, COURTNEY A
ART UNIT PAPER NUMBER
1617
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUSANNE HOLZER, WOLFGANG KRAUSE,
CHRISTOPH LESNIAK, and HELMUT SCHMIDT1
Appeal2014-002178
Application 10/493,063
Technology Center 1600
Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
McCOLLUM, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for preparing composite particles. The Examiner has rejected the claims for
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
1 Appellants identify the real party in interest as Leibniz-Institut fuer N eue
Materialien Gemeinnuetzige GmbH (Br. 3).
Appeal2014-002178
Application 10/493,063
STATEMENT OF THE CASE
Claims 11-33 and 55-79 are on appeal and are set forth in the Claims
Appendix to Appellants' Appeal Brief (Br. 5 & 22-29). Claim 11 is
illustrative and reads as follows (paragraphs added):
11. A process for preparing composite particles which comprise
superparamagnetic iron oxide particles incorporated in a polysiloxane matrix
comprising at least one functional group, the process comprising
(a) providing an aqueous-organic emulsion which comprises pre-
formed superparamagnetic iron oxide particles having an average particle
diameter of less than 30 nm and a precondensate obtained from one or more
hydrolyzable silane compounds,
(b) condensing the precondensate to form composite particles which
comprise the iron oxide particles incorporated in a polysiloxane matrix, and
(c) optionally, reacting the polysiloxane matrix with one or more
organic compounds,
at least one of (i) said precondensate and (ii) said one or more organic
compounds comprising the at least one functional group.
Claims 11-33 and 55-79 stand rejected under 35 U.S.C. § 103(a) as
obvious over Sieber2 and Lesniak, 3 in view of Chagnon, 4 as evidenced by
Heusch5 (Final Act. 4).
The Examiner relies on Sieber for disclosing "magnetic particles
comprising mixed oxides of divalent metals and iron (III) (i.e., ferrites)
having a diameter of 1-10 nm and the process for making said particles by
simultaneous precipitation and silanization from an aqueous solution" (id. at
5 (emphasis omitted)).
2 Sieber, US 5,776,360, July 7, 1998.
3 Lesniak et al., US 6,183,658 Bl, Feb. 6, 2001.
4 Chagnon et al., US 4,628,037, Dec. 9, 1986.
5 Rudolf Reusch, Emulsions, Ullmann's Encyclopedia Industrial Chemistry
(June 15, 2000).
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In addition, the Examiner relies on Lesniak for disclosing "a process
for preparing nanosize iron-containing oxide particles coated in a stable
manner" (id. at 7 (emphasis omitted)). In particular, the Examiner cites
Lesniak for teaching: "In step (1 ), an aqueous suspension of nanosize iron-
containing oxide particles which are partly or completely present in the form
of agglomerates is prepared .... In step (2), a particular trialkoxysilane and
also a particular water-miscible polar organic solvent are added to the above
aqueous suspension of iron-containing oxide particles." (Id. at 7-8
(emphasis omitted).) The Examiner also notes that Lesniak teaches "using
trialkoxysilanes such as 3-aminopropyltriethoxysilane, N-aminoethyl-3
aminopropyltrimethoxysilane, trimethoxysilylpropyl-diethylenetriamine and
N-( 6-aminohexyl)-3-aminopropyltrimethoxysilane" (id. at 8 (emphasis
omitted)). The Examiner further notes:
(Id.)
Lesniak et al. teach that composite particles can be produced, for
example, by mixing aqueous suspensions of the iron oxide
nanoparticles with hydrolysable compounds (e.g. alkoxides) of
silicon, titanium, zirconium, etc., or corresponding sols and
subsequent hydrolysis/condensation, thus making it possible to
produce filled glass-like films, or by mixing with monomeric
epoxides, making it possible to produce nanocomposite layers by
polymerization, or mixing with alkoxysilanes and hydrolysis in
water-in-oil emulsions, thus making it possible to produce
particulate nanocomposites.
The Examiner relies on Chagnon for teaching features of dependent
claims (id. at 9). The Examiner relies on Reusch as providing evidence that
"emulsions are formed from the presence of oil in combination with an
emulsifier and solubilize[r]s such as organic solvents" (id.).
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The Examiner concludes:
All the claimed elements were known in the prior art and one
skilled in the art could have combined the elements as claimed
by known methods with no change in their respective functions,
and the combination would have yielded predictable results to
one of ordinary skill in the art at the time of the invention.
(Id. at 11.)
FINDINGS OF FACT
1. Lesniak relates to:
a process for producing agglomerate-free nanosize iron-
containing oxide particles, i.e. iron-containing oxide particles
having a particle size (a mean particle diameter) of the primary
particles of not more than 100 nm, preferably not more than
40 nm and in particular not more than 30 nm, which have a very
hydrolysis resistant coating based on silane (core-shell
structure).
(Lesniak, col. 1, 11. 6-12.)
2. In particular, Lesniak discloses a process comprising:
(1) preparation of an aqueous suspension ofnanosize iron-
containing oxide particles which are partly or completely present
in the form of agglomerates;
(2) addition (i) of a trialkoxysilane which has a
hydrocarbon group which is directly bound to Si and to which at
least one amino, carboxyl, epoxy, mercapto, cyano, hydroxy
and/or (meth)acrylic group is bound, and (ii) of a water-miscible
polar organic solvent whose boiling point is at least 10° C. above
that of water;
(3) treatment of the resulting suspension with ultrasound
until at least 70% of the particles present have a size within the
range from 20% below to 20% above the mean particle diameter;
( 4) removal of the water by distillation under the action of
ultrasound; and
( 5) removal of the agglomerates which have not been
broken up.
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(Id. at col. 2, 11. 17-37.)
3. In addition, Lesniak discloses "that the polycondensation of the
silane species used on the particle surface which is necessary for the stable
coating of the (primary) particles can be achieved efficiently under the above
conditions" (id. at col. 2, 11. 39--45).
4. Lesniak further discloses that "preference is given to using
trialkoxysilane having at least one amino group (hereinafter referred to as
aminosilanes )" and that "[ s ]pecific examples of such aminosilanes are
3-aminopropyltriethoxysilane, N-aminoethyl-3-aminopropyltrimethoxy-
silane, trimethoxysilylpropyldiethylenetriamine and N-( 6-aminohexyl)-
3-aminopropyltrimetoxysilane" (id. at col. 3, 11. 45-51).
5. Lesniak also discloses:
Nanocomposite particles can be produced, for example, by
mixing aqueous suspensions of the iron oxide nanoparticles with
hydrolysable compounds (e.g. alkoxides) of silicon, titanium,
zirconium, etc., or corresponding sols and subsequent
hydrolysis/condensation, thus making it possible to produce
filled glass-like films, or by mixing with monomeric epoxides,
making it possible to produce nanocomposite layers by
polymerization, or mixing with alkoxysilanes and hydrolysis in
water-in-oil emulsions, thus making it possible to produce
particulate nanocomposites.
(Id. at col. 6, 11. 51-60.)
ANALYSIS
In view of the foregoing findings of fact (FF), we conclude that the
Examiner has set forth a prima facie case that the process for preparing
composite particles of claim 11 would have been obvious.
Appellants raise various arguments with regard to Sieber (Br. 6-12).
In response to these arguments, the Examiner relies on Lesniak to teach or
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suggest the disputed features (Ans. 3-8). Therefore, we have focused our
discussion on Lesniak below.
Appellants also argue that the "Examiner does not explain why one of
ordinary skill in the art would allegedly have combined SIEBER and
LESNIAK" (Br. 10). However, as discussed below, Appellants have not
pointed to a deficiency in Lesniak for which Sieber is even needed.
Therefore, we are not persuaded by this argument.
With regards to Lesniak, Appellants argue that "the alkoxysilanes
mentioned by LESNIAK are not present in the form of precondensates as
recited in claim 11, and neither does LESNIAK suggest that these
alkoxysilanes should be precondensed before they are contacted with the
iron oxide nanoparticles" (id. at 13). We are not persuaded.
Claim 11 recites "providing an aqueous-organic emulsion which
comprises pre-formed superparamagnetic iron oxide particles ... and a
precondensate obtained from one or more hydrolyzable silane compounds"
(id. at 22 (emphasis added)). "[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification." In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000). See also
Cuozzo Speed Technolgies, LLC v. Lee, 136 S. Ct. 2131, 2144 (June 20,
2016).
In the present case, Appellants have not pointed to a teaching in the
Specification, nor have we found such a teaching, that clearly explains the
term "precondensate." Therefore, we have interpreted this term to broadly
include a material before it is condensed. Lesniak teaches
"polycondensation of the silane species" (FF 3). Appellants have not
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Application 10/493,063
adequately explained why it is therefore improper to consider Lesniak's
silane species to be a precondensate.
Furthermore, contrary to Appellants' argument, we do not agree that
claim 11 requires that the alkoxysilanes be precondensed before they are
contacted with the iron oxide nanoparticles. On the contrary, instant
claim 11 merely requires "providing an aqueous-organic emulsion which
comprises [both] pre-formed superparamagnetic iron oxide particles ... and
a precondensate," and then recites "condensing the precondensate to form
composite particles" (Br. 22 (emphasis added)).
Appellants also argue that it "is not seen that LESNIAK teaches or
suggests that [its] alkoxysilanes ... contain any functional group (let alone
any of the functional groups recited in instant claims 14 and 64, for
example)" (id. at 14). Appellants present similar arguments with regard to
claims 14, 15, and 17 (id. at 16-17). We are not persuaded.
Lesniak discloses "a trialkoxysilane ... to which at least one amino,
carboxyl, epoxy, mercapto, cyano, hydroxy and/or (meth)acrylic group is
bound" (FF 2). Additionally, Lesniak exemplifies suitable alkoxysilanes
(FF 4). Appellants do not adequately explain why these teachings fail to
suggest the features of claims 11, 14, 15, 17, and 64.
Appellants additionally argue that it "is not seen that LESNIAK
teaches or suggests that [its] alkoxysilanes ... are ... reacted (in the form of
a polysiloxane matrix) with one or more organic compounds which comprise
a functional group (let alone compounds such as those recited in instant
claims 18, 19 and 65, for example)" (Br. 14; see also id. at 17-18). We are
not persuaded.
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Claim 11 recites, in part ( c ), that the polysiloxane matrix is optionally
reacted with one or more organic compounds (id. at 22). The limitations as
recited in claims 18, 19, and 65 merely limit the particular organic
compounds that could be reacted with the polysiloxane matrix in option ( c)
of claim 11, and do not require option ( c) to be present.
With respect to claim 31, Appellants argue:
It is not seen that SIEBER or LESNIAK teaches or suggest using
a microemulsion in the processes disclosed therein, and neither
does the Examiner provide any explanation in this regard as to
why one of ordinary skill in the art would have an apparent
reason to employ a microemulsion in any of the processes
disclosed by SIEBER and LESNIAK.
(Id. at 18.) We are not persuaded.
Lesniak discloses that "[ n ]anocomposite particles can be produced,
for example, by mixing aqueous suspensions of the iron oxide nanoparticles
... with alkoxysilanes and hydrolysis in water-in-oil emulsions" (FF 5). We
conclude that Appellants have not adequately explained why such an
emulsion would not be considered a microemulsion. See In re Best, 562
F.2d 1252, 1255 (CCPA 1977).
With respect to claim 70, Appellants argue that it "is not seen that
LESNIAK teaches or suggests an evaporation of an aqueous phase of an
aqueous-organic emulsion, let alone after the condensation of a
precondensate to form composite particles which comprise iron oxide
particles incorporated in a polysiloxane matrix" (Br. 19). We are not
persuaded.
Lesniak discloses a process for producing silane coated particles
comprising "(1) preparation of an aqueous suspension of nanosize iron-
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Application 10/493,063
containing oxide particles ... (2) addition (i) of a trialkoxysilane ... and
(ii) of a water-miscible polar organic solvent ... (3) treatment of the
resulting suspension with ultrasound ... [and] (4) removal of the water by
distillation under the action of ultrasound'' (FF 1-2 (emphasis added)).
Lesniak also discloses that these conditions provide "polycondensation of
the silane species" (FF 3). In addition, Lesniak discloses that
"[ n ]anocomposite particles can be produced, for example, by mixing
aqueous suspensions of the iron oxide nanoparticles ... with alkoxysilanes
and hydrolysis in water-in-oil emulsions" (FF 5 (emphasis added)).
Appellants have not adequately explained why these teachings fail to
suggest evaporating the aqueous phase of the aqueous-organic emulsion
after condensation.
With respect to claim 71, Appellants argue "that the Examiner ... has
not explained at all why LESNIAK (and/or SIEBER) allegedly renders [this
claim] obvious ... , nor does this become apparent from LESNIAK (and/or
SIEBER)" (Br. 20). We agree.
Although the Examiner cites to various teachings of Sieber and
Lesniak (Ans. 17) as teaching the claimed limitations, we conclude that the
Examiner does not adequately explain how these references teach or suggest
that "the aqueous phase is evaporated by adding the emulsion dropwise to a
hot solvent at a temperature of above 100 °C," as required in claim 71
(Br. 28).
With respect to claim 72, Appellants argue that the Examiner does not
adequately explain how the applied references suggest the method of this
claim (id. at 19-20). We agree.
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We have reviewed the Examiner's position regarding claim 72 (Final
Act. 19 & Ans. 15-16). However, we conclude that the Examiner does not
adequately explain how the applied references teach or suggest a process
comprising "prehydrolyzing an alcoholic sol of one or more alkoxysilanes
under alkaline conditions, adding an aqueous suspension of the iron oxide
particles, removing the alcohol, and stirring the resultant mixture into a W /0
emulsion," as required in claim 72 (Br. 28).
CONCLUSION
The evidence supports the Examiner's conclusion that Sieber,
Lesniak, and Chagnon, as evidenced by Reusch, suggest the method of
claims 11, 14, 15, 17-19, 31, 64, 65, and 70. We therefore affirm the
obviousness rejection of these claims. Claims 12, 13, 16, 20-30, 32, 33, 55-
63, 66-69, and 76-79 have not been argued separately and therefore fall
with claim 11. 37 C.F.R. § 41.37(c)(l)(iv).
However, the Examiner has not set forth a prima facie case that
Sieber, Lesniak, and Chagnon, as evidenced by Reusch, suggest the method
of claims 71 and 72. We therefore reverse the obviousness rejection of
claims 71 and 72 and of claims 73-75, which directly or indirectly depend
from claim 72.
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).
AFFIRMED-IN-PART
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