Ex Parte Naasani et al

Patent Trial and Appeal Board

Aug 30, 2018

13624632 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/624,632 09/21/2012
15971 7590 09/04/2018
Nanoco
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Imad Naasani
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.
038-0038US 1426
EXAMINER
JOHNSON, CHRISTOPHER A
ART UNIT PAPER NUMBER
2899
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
houstonpatents@blankrome.com
dcooley@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IMAD NAASANI, JAMES HARRIS, and
NIGEL PICKETT 1
Appeal 2018-001808
Application 13/624,632
Technology Center 2800
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Nanoco Technologies Ltd.
Appeal 2018-001808
Application 13/624,632
Appellants request our review under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 22 and 27-29. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Claim 22 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
22. A light emitting device comprising:
a light emitting diode;
a light diffuser in spaced-apart relation to the light-
emitting diode and having a first surface oriented towards the
light emitting diode and an opposing second surface oriented
away from the light emitting diode; and
a light emitting layer in direct contact with the opposing
second surface of the light diffuser and in optical
communication with the light diffuser, said light emitting layer
comprising a plurality of light emitting particles embedded
within a host matrix material, each of said light emitting
particles comprising a population of semiconductor
nanoparticles embedded within a polymeric encapsulation
medium,
wherein the polymeric encapsulation medium comprises
a first polymer and the host matrix material comprises a second
polymer and the first and second polymers are formed from a
reverse emulsion so as to form microbeads encompassing the
semiconductor nanoparticles.
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Appeal 2018-001808
Application 13/624,632
The Examiner relies on the following prior art references as evidence
of unpatentability:
Kim
Dubrow
US 2009/0180055 Al
US 2010/0110728 Al
THE REJECTION
July 16, 2009
May 6, 2010
Claims 22 and 27-29 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Kim in view of Dubrow.
ANALYSIS
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports Appellants' position in the record for the
reasons stated by Appellants in the record, and we thus reverse the rejection,
and add the following for emphasis.
We agree with Appellants that although there is a product-by-
process element in claim 22, the claim structurally requires
microbeads encompassing the semiconductor nanoparticles. We thus
agree with Appellants' stated interpretation of claim 22 as set forth on
page 15 of the Appeal Brief and on pages 2-3 of the Reply Brief.
Appellants further explain that the definition of "micro beads" is
provided in the Specification as being defined as possessing "an
average diameter of around 20 nm to around 0.5 mm." Spec. ,r [0040].
Reply Br. 2-3.
It is the Examiner's position that Dubrow suggests the term
"microbead". The Examiner states:
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Appeal 2018-001808
Application 13/624,632
Although Dubrow does not explicitly use the term "microbead", it
teaches a microbead as claimed. Dubrow teaches a microbead (see
luminescent nanocrystal composite 1200 in Fig. 12; and see text
starting at [0122]) showing a host matrix material (1204), wherein the
light emitting particles comprise a population of semiconductor
nanoparticles (710) embedded within a polymeric
encapsulation medium (1202); wherein the polymeric encapsulation
medium (1202) comprises a first polymer ([0123] teaches many
materials, such as acrylic polymers like methacrylate) and the host
matrix material (1204) comprises a second polymer ([0124] teaches
epoxies) formed so as to form micro beads encompassing
the semiconductor nanoparticles (Fig. 12 shows the microbead
structure 1200).
The size range disclosed defining a "microbead" ("around 20
nanometers to around 0.5 millimeters" is fairly broad, and it is
suggested by the teachings at [0130] of Dubrow, where the scale of
the particulates is 10 microns to 100 microns. This is prior art range
fits comfortably inside the appellant definition of "micro bead."
Ans. 4 (emphasis added). As indicated, the Examiner views Dubrow's
element 1200 as the claimed microbead.
Appellants submit that the Examiner's understanding of Dubrow in
this regard is in error. Appellants state that Dubrow is in fact silent
regarding the size of structure 1200. Appellants explain that the teaching
relied upon by the Examiner found in ,r [0130] of Dubrow of the scale of the
particulates being from 10 to 100 microns is not referring to structure 1200,
but rather to "second polymeric material 1202" as shown Figure 12 of
Dubrow. Reply Br. 3--4. We agree.
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Appeal 2018-001808
Application 13/624,632
Figure 12 of Dubrow is reproduced below:
1206 ,200
Figurn 1.2
The above depicted Figure 12 of Dubrow shows first polymeric
material 1204, second polymeric material 1202, and a plurality of
luminescent nanocrystals 710 dispersed in material 1202. Dubrow, [0122].
[0122] is reproduced below:
[0122] In a still further embodiment, the present invention
luminescent nanocrystal composite materials 1200. As shown in FIG.
12, in embodiments, the composite materials comprise a first
polymeric material 1204 having a first composition, a
second polymeric 1202 material having a second composition, and a
plurality of luminescent nanocrystals 710 dispersed in second
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Appeal 2018-001808
Application 13/624,632
polymeric material 1202. The, second polymeric material 1202 is
dispersed in first polymeric material 1204.
Appellants state that Figure 12 of Dubrow shows that structure 1200
is at least an order of magnitude larger than particles 1202 of the "second
polymeric material." Thus, since the size of particles 1202 is from 10
microns to 100 microns, Appellants submit that structure 1200 of Dubrow is
at least an order of magnitude larger than particles 1202, and thus does not
fit the definition of "micro bead" within the meaning of this term as recited in
Appellants' claims. We are persuaded by this argument. As such, we
reverse the rejection.
DECISION
The rejection is reversed.
REVERSED
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