Ex Parte LI et al

Patent Trial and Appeal Board

Feb 26, 2018

13669636 (P.T.A.B. Feb. 26, 2018)

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.
13/669,636 11/06/2012 Xiaochun Li 00300-0196 9345
96854 7590
Bell & Manning, LLC
2801 West Beltline Highway
Ste. 210
Madison, WI 53713
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
docketing @ bellmanning, com
cbell @ bellmanning. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOCHUN LI, LIANYI CHEN, and JIAQUAN XU
Appeal 2017-005678
Application 13/669,63 61
Technology Center 1700
Before JULIA HEANEY, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—9, 11, 12, 19-21, 23, and 24. We have
jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Wisconsin Alumni
Research Foundation. Appeal Br. 2.
Appeal 2017-005678
Application 13/669,636
STATEMENT OF THE CASE2
Appellants describe the invention as relating to an immiscible alloy.
Spec. 12. Such materials can be useful, for example, as material for
bearings, electrical contacts, and superconductors. Id. The Specification
explains that by introducing stabilizing particles to a molten combination of
minority and majority phase material, the particle size of the minority phase
material can be controlled so that it remains below the size at which
gravitational and thermocapillary forces become significant and create a
non-uniform distribution. Id. at Fig. 1, || 27—29. Claim 1, reproduced
below with emphasis added to certain key recitations, is illustrative of the
claimed subject matter:
1. A solid immiscible alloy material comprising:
(a) an immiscible alloy comprising a majority phase
comprising a continuous matrix of a first inorganic material; and
a minority phase comprising a plurality of particles of a second
inorganic material dispersed in the majority phase, wherein the
minority phase particles have an average diameter of no
greater than 20 pm; and
(b) nanoparticles comprising a thermally stable material
coating the surfaces of the dispersed minority phase particles,
wherein the average smallest diameter for the distribution of the
nanoparticles is no greater than 250 nm.
Appeal Br. 13 (Claims App.).
2 In this opinion, we refer to the Final Office Action dated March 24, 2016
(“Final Act.”), the Appeal Brief filed October 24, 2016 (“Appeal Br.”), the
Examiner’s Answer dated December 19, 2016 (“Ans.”), and the Reply Brief
filed February 16, 2017 (“Reply Br.”). Because the Final Office Action
incorporates a non-final action by reference, we also refer to the Non-Final
Action dated November 25, 2015 (“Non-Final Act.”).
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Application 13/669,636
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 2, 9, and 24 under 35 U.S.C. § 112 as
indefinite. Ans. 2; see also Final Act. 3.
Rejection 2. Claims 1—9, 11, 12, 19, 21, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Kaptay et al., U.S. Patent No. 8,500,925 B2,
Aug. 6, 2013 (hereinafter “Kaptay”) in view of Perepezko et al., U.S. Patent
No. 5,066,324, Nov. 19, 1991 (hereinafter “Perepezko”). Ans. 3; see also
Final Act. 4.
ANALYSIS
Rejection 1. The Examiner rejects claims 1, 2, 9, and 24 under 35
U.S.C. § 112 as indefinite. Ans. 2; see also Final Act. 3. In particular, the
Examiner states that it is unclear what the recitation “average smallest
diameter for the distribution of the nanoparticles” means because “‘the
smallest diameter’ and ‘the average diameter’ should not [be] put together.”
Non-Final Act. 2. Similarly, the Examiner also states that claim 24 is
indefinite because the recitation “the average largest diameter for the
distribution of the nanoparticles” is unclear because a “‘distribution’ should
not have ‘diameter’” and because it is not clear what “distribution” is
indicated in the instant claim. Final Act. 3.
Appellants argue that these recitations are reasonably clear because
the Specification explains that particles may not be perfectly spherical but
the particles will nonetheless have smallest and largest cross-sectional
dimensions. Appeal Br. 5—6. We agree with Appellants’ position. The
Specification, at paragraph 25, explains that the nanoparticles may not be
spherical. Paragraph 24 explains distribution in terms of smallest cross-
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Application 13/669,636
sectional dimension and average smallest cross-sectional dimension. Given
the context provided by paragraphs 24 and 25 of the Specification, it is
reasonably clear that, for example, “average smallest diameter” refers to a
calculated average of all of the smallest cross-sectional diameters of
particles within a distribution of particles. Accordingly, we do not sustain
the Examiner’s 35U.S.C. § 112 rejections.
Rejection 2. The Examiner rejects claims 1—9, 11, 12, 19, 21, and 23
under 35 U.S.C. § 103(a) as unpatentable over Kaptay in view of Perepezko.
Ans. 3; see also Final Act. 4. The Examiner finds that Kaptay (referred to
by the Examiner as US’925) teaches a monotectic alloy with a dispersed and
distributed second phase and teaches stabilizing particles with a maximum
diameter 2—100 times lower than the average equivalent diameter of the
droplets to be stabilized. Non-Final Act. 3^4. The Examiner finds that
Kaptay does not specify that the diameter of the minority phase should be no
greater than about 20 micrometers as recited in claim 1. Id. The Examiner
finds that Perepezko evidences that choosing a proper droplet size is well-
known and that Perepezko teaches minority phase droplets having an
average diameter between 5—300 micrometers which overlaps the range of
the average diameter of the minority phase as recited in claim 1. Id. 4—5.
The Examiner thus concludes that it would have been obvious to choose a
proper minority phase droplet size that overlaps with the size recited by
claim 1 as taught by Perepezko when practicing the technique of Kaptay. Id.
at 4.
Appellants argue that the Examiner has not adequately established
that Kaptay’s method will result in a minority phase with an average
diameter of no greater than 20 micrometers. Appeal Br. 8. In particular,
Appellants argue that the May 23, 2016, declaration of Lianyi Chen
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Application 13/669,636
establishes that if Kaptay’s methods are followed, much larger minority
phase particles will result even if very small (50 nanometer) thermally stable
nanoparticles are used. Appeal Br. 8—12. Appellants further explain that
Kaptay is unable to reach this small size because Kaptay relies on
mechanical mixing rather than restricting diffusional transport. Id.
The Examiner maintains that Kaptay does not merely teach
“mechanical mixing” but does not persuasively explain how Appellants’
experiment differs from the procedure of Kaptay. Ans. 6; see also Reply Br.
2 (“The Examiner has yet to explain why this data is not persuasive or
proper.”). As such, the Examiner has not adequately explained why there is
reason to believe that the procedure of Kaptay would have produced, with a
reasonable expectation of success, minority phase particles with average
diameter of no greater than 20 micrometers. Accordingly, we do not sustain
the Examiner’s rejection of claim 1. We also do not sustain the Examiner’s
rejection of the other claims on appeal because each of those claims depend
from claim 1.
DECISION
For the above reasons, we reverse the Examiner’s rejections of
claims 1—9, 11, 12, 19—21, 23, and 24.
REVERSED
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