Ex Parte Kodas et al

Patent Trials and Appeals Board

Apr 25, 2019

14285804 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/285,804 05/23/2014
60601 7590 04/29/2019
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
FIRST NAMED INVENTOR
Toivo T. Kodas
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.
4303/0l 45PUS 1 4847
EXAMINER
GREENE, NAN A
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
04/29/2019 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOIVO T. KODAS, MARK J. HAMPDEN-SMITH,
SCOTT T. HAUBRICH, HENG YU, NED J. HARDMAN,
RALPH E. KORNBREKKE, AARON STUMP, KLAUS KUNZE,
DAVID DERICOTTE, and KAREL V ANHEUSDEN
Appeal 2018-008156
Application 14/285,804
Technology Center 1600
Before JEFFREY N. FRED MAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134(a) involving claims to a
process for making multi-component particles of inorganic nanoparticles
distributed in an organic matrix. The Examiner rejected the claims as
1 Appellants identify the Real Party in Interest as SICP A HOLDING SA
(App. Br. 2).
2 We have considered and herein refer to the Specification of May 23, 2014
("Spec."); Final Office Action of Dec. 22, 2017 ("Final Act."); Appeal Brief
of Apr. 27, 2018 ("App. Br."); Examiner's Answer of June 13, 2018
("Ans."); and Reply Brief of Aug. 9, 2018 ("Reply Br.").
Appeal 2018-008156
Application 14/285,804
obvious and under the grounds of obviousness-type double patenting. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Statement of the Case
Background
"N anoparticles, and processes for making nanoparticles, have been the
subject of recent interest and research because of the advantages provided by
nanoparticles over larger sized particulate materials" (Spec. ,-J 3).
N anoparticles have a tendency "to agglomerate because of their high surface
area and surface energy" (Spec. ,-J 4). "[T]he tendency of nanoparticles to
agglomerate makes the forming, processing, handling, transporting and use
of nanoparticles difficult" (id.). "Thus, there is a need for additional
processes for forming, processing, handling, transporting, dispersing and
using nanoparticles" (Spec. ,-J 6).
The Claims
Claims 55-61, 92-98, and 128-132 are on appeal. Independent claim
55 is representative and reads as follows:
55. A process for making multi-component particles
comprising inorganic nanoparticles distributed in an organic
matrix, the process comprising the steps of:
(a) generating an aerosol comprising droplets, wherein
the droplets comprise a liquid vehicle, an inorganic nanoparticle
precursor and an organic matrix precursor; and
(b) removing at least a portion of the liquid vehicle from
the droplets under conditions effective to convert at least a
portion of the organic matrix precursor to the organic matrix
and to convert at least a portion of the inorganic nanoparticle
precursor to the inorganic nanoparticles distributed in the
organic matrix.
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Appeal 2018-008156
Application 14/285,804
(App. Br. 18).
The Issues
A. The Examiner has rejected claims 55-60, 92-96, and 128-132
under 35 U.S.C. § 103(a) as obvious over Hampden-Smith,3
Kunze,4 and Tong5 (Final Act. 2-12).
B. The Examiner has rejected claims 61, 97, and 98 under 35 U.S.C.
§ 103(a) as obvious over Hampden-Smith, Kunze, Tong, and
Flagan6 (Final Act. 12-15).
C. The Examiner has rejected claims 55-61, 92-98, and 128-132 on
the ground of nonstatutory double patenting as being unpatentable
over claims 1-108 of U.S. Patent No. 6,338,809 with Kunze, Tong,
and Flagan (Final Act. 23-26).
A.-C. Obviousness and Obviousness-type double patenting
Because the same issue is dispositive for the all of the rejections, we
consider the rejections together.
The Examiner finds Hampden-Smith teaches a process for making a
particulate product by generating an aerosol including droplets containing a
liquid and at least one precursor material, removing at least a portion of the
liquid from the droplet, and forming particles of the material (see Final Act.
4-5, citing Hampden-Smith claim 1). The Examiner finds Hampden-Smith
teaches making multi-phase particles that include a metallic phase and a
3 Hampden-Smith et al., US 6,338,809 Bl, issued Jan. 15, 2002.
4 Hampden-Smith et al., US 6,193,908 Bl, issued Feb. 27, 2001
5 Tong et al., US 5,536,994, issued July 16, 1996.
6 Flagan et al., US 2002/0098653 Al, published July 25, 2002.
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Appeal 2018-008156
Application 14/285,804
non-metallic phase (Final Act. 5-6, citing Hampden-Smith 2:25-30). The
Examiner finds Hampden-Smith teaches the "particles can include organic
coatings such as polymethylmethacrylate (PMMA), polystyrene, or the like"
(Final Act. 8, citing Hampden-Smith 45: 1-10).
The Examiner acknowledges that Hampden-Smith "does not
expressly teach the process results in inorganic nanoparticles distributed in
an organic matrix material" (Final Act. 9). The Examiner finds Kunze
teaches phosphor nanoparticles dispersed in a polymer matrix (Final Act. 10,
citing Kunze 40:54-65). The Examiner determines it would have been
obvious to incorporate an organic polymer as a second precursor material in
the process in order to produce phosphor nanoparticles in a polymer organic
matrix (see Final Act. 11 ).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that the prior art
renders the claims obvious?
Findings of Fact ("FF'')
1. Hampden-Smith recites:
An aerosol method for making a particulate product ...
comprising the steps of:
generating an aerosol stream including droplets suspended in a
carrier gas ... said droplets are released from a reservoir of an
ultrasonically energized flowable medium, said flowable
medium comprising a liquid and at least one precursor for a
material to be included in the particulate product;
removing at least a portion of said liquid from at least a portion
of said droplets of said aerosol stream and forming particles
including said material
(Hampden-Smith 50:19-30 (claim 1)).
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Appeal 2018-008156
Application 14/285,804
2. Hampden-Smith teaches "[t]he liquid feed 102 may include multiple
precursor materials, which may be present together in a single phase or
separately in multiple phases" (Hampden-Smith 6:20-22).
3. Hampden-Smith teaches "the multi-phase particles may include an
intimate mixture of the first material phase and the second material phase, as
in the multi-phase particle 500. Typically, with such an intimate mixture,
the first material phase is a continuous phase throughout which the second
material phase is dispersed" (Hampden-Smith 40:40-45).
4. Hampden-Smith teaches "[t]he multi-phase particles include a
metallic phase and a non-metallic phase ... the non-metallic phase
comprises at least one of silica, alumina, titania and zirconia [or] a titanate,
such as barium titanate, neodymium titanate or other titanates" (Hampden-
Smith 2:25-35).
5. Hampden-Smith teaches "[fJor most phosphor applications, the
average particle size is [] preferably from about 0.1 micron to about 4
microns" (Hampden-Smith 44:5-8).
6. Hampden-Smith teaches
the phosphor particles can include organic coatings such as
PMMA (polymethylmethacrylate ), polystyrene or the like. The
organic coating should be on the order of 1 to 100 nanometers
thick and be substantially dense and continuous about the
particle. Such coatings can be formed after the powders are
prepared by a liquid phase process. The organic coatings can
advantageously prevent corrosion of the phosphor particles
especially in electroluminescent lamps and also can improve the
dispersion characteristics of the particles
(Hampden-Smith 45: 1-10).
7. Kunze teaches phosphor nanoparticles (Kunze 31 :51-62).
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Application 14/285,804
8. Kunze teaches
the phosphor particles can be coated with an organic compound
such as PMMA (polymethylmethacrylate ), polystyrene or
similar organic compounds, including surfactants that aid in the
dispersion and/or suspension of the particles in a flowable
medium. The organic coating is preferably not greater than
about 100 nanometers thick and is substantially dense and
continuous about particle. The organic coatings can
advantageously prevent corrosion of the phosphor particles and
also can improve the dispersion characteristics of the particles
in a paste or other flowable medium
(Kunze 35:19-29).
9. Kunze teaches "a phosphor powder/polymer composite 1142 []
sandwiched between two electrodes 1144 and 1146, the front electrode 1144
being transparent. The composite layer 1142 includes phosphor particles
1148 dispersed in a polymer matrix 1150" (Kunze 40:39-65).
Principles of Law
A prima facie case for obviousness "requires a suggestion of all
limitations in a claim," CFMT, Inc. v. Yieldup Int 'l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003), and "a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
Appellants contend "Kunze merely discloses that the inorganic
phosphor particles can be coated with an organic coating. According to
Kunze, the coating should be performed in a separate step" (App. Br. 12,
citing Kunze, 19:43-57; 35:30-46; Figure 33). Appellants contend "[t]his
organic coating does not teach or disclose the process of the claimed
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Application 14/285,804
invention," namely generating an aerosol comprising droplets wherein the
"droplets comprise a liquid vehicle, an inorganic nanoparticle precursor and
an organic matrix precursor" (see id.). As such, Appellants argue "the
Examiner fails to specify that the organic precursor is known from Kunze
and/or Tong in order to support modifying Hampden-Smith" (App. Br. 14).
We find this argument persuasive because the Examiner does not
identify any teaching in Hampden-Smith, Kunze, or Tong that suggests
"generating an aerosol comprising droplets, wherein the droplets comprise a
liquid vehicle, an inorganic nanoparticle precursor and an organic matrix
precursor" in order to form inorganic nanoparticles distributed in an organic
matrix.
That is, claim 55 requires all of the components are present in the
same aerosol at the same time, and then both the inorganic nanoparticle
precursor and the organic matrix precursor are converted into the final multi-
component particle with inorganic particles distributed in the organic matrix.
For this reason, we are not persuaded by the Examiner's finding that:
The disclosure cited regarding a second coating step is directed
to particle exiting the furnace (KUNZE: col. 19, 4th paragraph),
and is not excluded by the rejected claims. The disclosure in
column 35, 3rd paragraph is not specific to a coating using a
separate step. One of ordinary skill in the art would have
recognized that the general teaching that "The organic coatings
can advantageously prevent corrosion of the phosphor particles
[ ... ]" (KUNZE: col. 35, lines 26-27) would have been
equally applicable to phosphor nanoparticles dispersed in an
organic matrix as the nanoparticles would be dispersed in and
thus coated by the organic matrix.
(Ans. 9). The citations by the Examiner to Hampden-Smith and Kunze all
describe applying an organic material to inorganic nanoparticles as a coating
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Application 14/285,804
after the phosphor nanoparticles are formed. So the aerosol with both
precursor components in claim 55 is never formed in these prior art
references.
Kunze's disclosure of a composite layer including inorganic
(phosphor) nanoparticles distributed in an organic (polymer) matrix does not
provide the missing teaching of the claimed process (see App. Br. 12).
Because the Examiner has not met the initial burden of establishing prima
facie obviousness, we reverse the Examiner's rejection.
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that the prior art renders claim 55 obvious under 35 U.S.C. § 103(a) or
obviousness-type double patenting.
SUMMARY
In summary, we reverse the rejection of claims 55-60, 92-96, and
128-132 under 35 U.S.C. § 103(a) as obvious over Hampden-Smith, Kunze,
and Tong.
We reverse the rejection of claims 61, 97, and 98 under 35 U.S.C.
§ 103(a) as obvious over Hampden-Smith, Kunze, Tong, and Flagan.
We reverse the rejection of claims 55-61, 92-98, and 128-132 on the
ground of nonstatutory double patenting as being unpatentable over claims
1-108 of U.S. Patent No. 6,338,809 with Kunze, Tong, and Flagan.
REVERSED
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