Ex Parte Reyes-Reyes et al

Patent Trials and Appeals Board

Feb 12, 2019

11823352 - (D) (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/823,352
11806 7590
Fox Rothschild LLP
Charlotte Office
FILING DATE
06/27/2007
02/14/2019
997 Lenox Drive
Lawrenceville, NJ 08648
FIRST NAMED INVENTOR
Marisol Reyes-Reyes
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.
5012921.003US3 9606
EXAMINER
TRINH, THANH TRUC
ART UNIT PAPER NUMBER
1726
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARISOL REYES-REYES, KYUNGKON KIM, and
DAVID L. CARROLL
Appeal2018-003612
Application 11/823,352
Technology Center 1700
Before BEYERL YA. FRANKLIN, GEORGIANNA W. BRADEN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 3-16, and 52-59. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
1 In this Decision, we refer to the Specification filed June 27, 2007
("Spec."), the Final Office Action dated October 8, 2015 ("Final Act."), the
Appeal Brief filed September 6, 2016 ("Appeal Br."), the Examiner's
Answer dated December 22, 2017 ("Ans."), and the Reply Brief filed
February 20, 2018 ("Reply Br.").
2 Appellants identify the real party in interest as Wake Forest University.
Appeal Br. 3.
Appeal 2018-003612
Application 11/823,352
The subject matter on appeal relates to composite materials, for
example, composite organic thin films for use in optoelectronic devices.
Spec. 1, 11. 10-11, 19--21. Claim 1, reproduced below from the Claims
Appendix of the Appeal Brief, is illustrative of the claims on appeal.
1. A composition comprising:
a composite material comprising a polymeric phase and a
nanoparticle phase, the nanoparticle phase comprising a
plurality of exaggerated nanocrystalline grains, wherein the
exaggerated nanocrystalline grains are at least partially aligned
in the polymeric phase and dispersed throughout the polymeric
phase.
Appeal Br. 2 (Claims App.)
REJECTIONS
The Examiner maintains the following rejections on appeal (Ans. 3):
Rejection 1: Claims 1, 3-5, 7-9, 12, 13, 16, and 56 under pre-AIA
35 U.S.C. § I02(b) as anticipated by or, in the alternative, under pre-AIA
35 U.S.C. § I03(a) as obvious over Chirvase et al., Influence of
nanomorphology on the photvoltaic action of polymer-fullerene composites,
15 Nanotechnology 1317-1323 (2004) ("Chirvase");
Rejection 2: Claims 6, 53-55, and 57-59 under 35 U.S.C. § I03(a)
over Chirvase;
Rejection 3: Claim 10 under 35 U.S.C. § I03(a) over Chirvase in
view of Williams et al. (US 2006/0076050 Al, published April 13, 2006)
("Williams") and Sainte Catherine et al. (WO 2004/ 112163 A 1, published
December 23, 2004) ("Sainte Catherine"); 3
3 An English-language equivalent is identified by the Examiner as
US 2007/0137701, published June 21, 2007 ("Sainte Catherine").
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Application 11/823,352
Rejection 4: Claims 11 and 15 under 35 U.S.C. § 103(a) over
Chirvase in view of Oldenburg et al. (US 6,685,986 B2, issued February 3,
2004) ("Oldenburg"); and
Rejection 5: Claims 14 and 52 under 35 U.S.C. § 103(a) over
Chirvase in view of Williams.
DISCUSSION
After review of the cited evidence in light of the Appellants' and the
Examiner's opposing positions, we determine that Appellants have not
identified reversible error in the Examiner's rejections. Accordingly, we
affirm the rejections for the reasons set forth below, in the Final Office
Action, and in the Examiner's Answer.
Rejection 1 - Claim 1
Appellants argue for patentability of claims 1, 3-5, 7-9, 16, and 5 6 as
a group. Appeal Br. 4--5. Although set forth under a separate heading in the
Appeal Brief, Appellants do not present any additional substantive
arguments for the patentability of claims 12 and 13. Id. at 5---6.
Accordingly, we choose claim 1 as representative, and claims 3-5, 7-9, 12,
13, 16, and 56 will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds Chirvase discloses a composite material that
includes a polymeric phase (poly(3-hexylthiophene) (P3HT)) and a
nanoparticle phase ([6,6]-phenyl-C61 butyric acid methyl ester (PCBM)).
Final Act. 7 ( citing Chirvase, Abstract); Spec. 5, 1. 31 - 6, 1. 1, 23-25
( disclosing P3HT as an example of a conjugated polymer suitable for use in
the polymeric phase, and disclosing PCBM as an example of exaggerated
nanocrystalline grains). In addition, the Examiner finds Chirvase teaches
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Application 11/823,352
that its nanoparticle phase includes a plurality of exaggerated nanocrystalline
grains that are at least partially aligned in the polymeric phase and dispersed
through the polymeric phase. Final Act. 7 (citing Chirvase 1320 (right
col., ,r 3), Fig. 5 (showing the grains are dispersed in the polymeric phase as
well as showing some of the grains are aligned side-by-side). Thus, the
Examiner concludes that Chirvase is anticipatory. Final Act. 7.
The Examiner alternatively finds that although Chirvase does not
expressly state that its "exaggerated nanocrystalline grains are at least
partially aligned in the polymeric phase and dispersed throughout the
polymeric phase," because Chirvase teaches the same composition recited in
claim 1, and using a similar method of annealing described in Appellants'
Specification, one of ordinary skill in the art would reasonably expect
Chirvase' s composition to have the same or similar characteristics as
claim 1 's compositions----exaggerated nanocrystalline grains that are at least
partially aligned in the polymeric phase and dispersed throughout the
polymeric phase. Final Act. 8-9; Spec. 15, 11. 19-23 ( describing one method
of annealing as disposing the composite material in a thermal gradient, e.g.,
heating one side of the composite material using a hot plate and maintaining
the opposing side of the composite material at a constant temperature).
Appellants contend that Chirvase' s Figure 5 shows large fullerene
clusters having dimensions greater than 1 µm and, in some cases, greater
than 10 µm. Appeal Br. 4. Appellants, therefore, argue that Chirvase
teaches micron-sized, not nanocrystalline grains. Id. at 4--5; Reply Br. 2-3.
Claim 1 recites a composite material comprising a polymeric phase
and a nanoparticle phase where the nanoparticle phase comprises "a plurality
of exaggerated nanocrystalline grains." Claim 1 does not require that the
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Application 11/823,352
grains have any particular length or diameter. Appellants' Specification
defines an exaggerated nanocrystalline grain as "a crystalline nanoparticle
formed from a plurality of nanoparticles, such as carbon nanoparticles,
during exaggerated or abnormal grain growth." Spec. 3, 11. 21-24.
Appellants' Specification teaches that carbon nanoparticles comprise
fullerene conjugates, such as PCBM. Id. at 6, 11. 23-25. Appellants'
Specification also teaches that "an exaggerated nanocrystalline grain can
have a length ranging from about 50 nm to about 500 nm." Id. at 7, 11. 6-7.
Chirvase discloses that its composite material includes the fullerene
derivative PCBM. Chirvase, Abstract. In addition, as the Examiner finds,
and Appellants admit, Chirvase teaches that due to thermal annealing,
PCBM crystallizes, forming relatively large clusters in the P3HT:PCBM
mixture, the vertical extension (length) of which sometimes surpasses
500 nm. Compare Final Act. 7 (citing Chirvase 1320 (right col.)), with
Reply Br. 2. The Examiner also finds that Chirvase teaches that its PCBM
clusters have a size up to 500 nm. Ans. 5 ( citing Chirvase, Abstract). Thus,
a preponderance of the evidence supports the Examiner finding that
Chirvase teaches a composite material comprising exaggerated
nanocrystalline grains.
Appellants argue that Chirvase does not teach, and cannot produce,
exaggerated nanocrystalline grains dispersed throughout a polymeric phase.
Appeal Br. 4--5. Appellants further argue that there is no teaching or
motivation to modify the annealing conditions described in Chirvase to
arrive at the presently claimed composite material. Id. at 5.
Claim 1 recites "the exaggerated nanocrystalline grains are at least
partially aligned in the polymeric phase and dispersed throughout the
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polymeric phase" ( emphasis added). Claim 1 does not require that the
nanocrystalline grains are completely aligned in the polymeric phase and
dispersed throughout the polymeric phase.
As the Examiner finds, Chirvase' s Figure 5 shows the exaggerated
nanocrystalline grains (or grains formed by a plurality nanoparticles ofball-
shaped fullerenes) are at least partially aligned in the polymeric phase, either
by sticking together or by making a line, and also shows the exaggerated
nanocrystalline grains dispersed throughout the polymeric phase as the
exaggerated crystalline grains are spotted throughout the scanned surface
area similar to Figure 1 of Appellants' application. Compare Chirvase
Figure 5, with Appellants' application Figure 1. Thus, a preponderance of
the evidence supports the Examiner finding that Chirvase teaches a
composite material comprising a polymeric phase and a nanoparticle phase
comprising a plurality of exaggerated nanocrystalline grains where the
exaggerated grains are at least partially aligned in the polymeric phase and
dispersed throughout the polymeric phase.
Furthermore, even though Chirvase does not explicitly state that the
exaggerated nanocrystalline grains in its composite material are "at least
partially aligned in the polymeric phase and dispersed throughout the
polymeric phase," as the Examiner finds, Chirvase not only teaches
claim 1 's composition, but also teaches forming the exaggerated crystalline
grains using substantially the same method as disclosed in Appellants'
Specification-forming the grains ( or clusters) by annealing the composite
material, where annealing is performed in a thermal gradient established by
heating one side of the composite while maintaining the opposing side at a
constant temperature. Compare Chirvase 1318-1319 (Figure 2;
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"Experimental details" ( teaching or suggesting annealing at a temperature of
130°C for a period of 20 seconds and for a period of 1 hour under nitrogen
atmosphere)), with Appellants' Spec. 15, 11. 18-23 (disclosing that
annealing, according to some embodiments, comprises disposing the
composite material in a thermal gradient, which can be established by
heating one side of the composite material while maintaining the opposing
side of the composite material at a constant temperature or cooling the
opposing side). Thus, a preponderance of the evidence supports the
Examiner's finding that one of ordinary skill in the art would reasonably
expect Chirvase' s nanocrystalline grains are at least partially aligned in the
polymeric phase and dispersed throughout the polymeric phase. See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where ... the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.").
Moreover, despite Appellants' argument (Appeal Br. 5; Reply Br. 3-
4), Appellants' Specification does not teach that its annealing process is
required to be carried out at a temperature of about 155°C for about
3 minutes to produce claim 1 's composite material comprising exaggerated
nanocrystalline grains. Thus, we are not persuaded that the Examiner erred
in determining that because Chirvase teaches forming the exaggerated
crystalline grains using substantially the same method as disclosed in
Appellants' Specification, one of ordinary skill in the art would reasonably
expect Chirvase' s composite material to include exaggerated nanocrystalline
PCBM grains that are partially aligned in the polymeric phase and dispersed
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throughout the polymeric phase. Appellants argue, but do not direct us to
sufficient evidentiary support (Appeal Br. 5; Reply Br. 3--4) that Chirvase's
annealing process would not produce claim 1 's composition material.
Because Appellants' arguments do not persuaded us of reversible
error in the Examiner's rejection, we sustain the rejection of claims 1, 3-5,
7-9, 12, 13, 16, and 56 under 35 U.S.C. § 103(a).
Rejection 2 - Claims 6, 55, 57-59
Appellants argue that claims 6, 55, and 57-59 are patentable over the
cited prior art for the same reasons as claim 1. Appeal Br. 6. Because we
are not persuaded of reversible error in the rejection of claim 1, we sustain
the Examiner's rejection of claims 6, 55, and 57-59 under 35 U.S.C.
§ 103(a).
Rejection 2- Claims 53 and 54
Claim 53 depends from claim 1 and requires that "the composite
material has a ratio of polymeric phase to nanoparticle phase of about 1:0.4."
Claim 54 depends from claim 1 and requires that "the composite material
has a ratio of polymeric phase to nanoparticle phase of about 1:0.3."
The Examiner finds that Chirvase teaches that the diode ( or solar cell)
characteristics improve as the PCBM ( or fullerene) concentration decreases.
Final Act. 11-12 (citing Chirvase 1321). Based on Chirvase's teaching, the
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to lower the concentration of nanoparticle phase (such as PCBM)
in Chirvase' s composite material so that the ratio of the polymeric phase to
the nanoparticle phase is about 1 :0.4 or 1 :0.3. Final Act. 12.
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Appellants contend that although Chirvase discloses a ratio of
polymeric phase to nanoparticle phase of 1:0.7 (corresponding to 41 %
PCBM), this concentration of PCBM, according to Chirvase, would not
enable the required formation of the charge transport pathways. Appeal
Br. 6. Thus, Appellants argue that Chirvase does not teach or suggest an
even lower ratio of polymeric phase to nanoparticle phase of 1 :0.3 and 1 :0.4
as recited in claims 53 and 54, respectively.
Appellants' argument is not persuasive of reversible error because it
fails to address the Examiner's findings and reasoning in support of the
rejection. That is, Appellants do not identify a reversible error in the
Examiner's finding that Chirvase teaches that the diode (or solar cell)
characteristics improve as the PCBM ( or fullerene) concentration decreases,
and based on such teaching, it would have been obvious to one of ordinary
skill in the art to use lower amounts of PCBM in the composite material and
thus arrive at a ratio of 1 :0.3 and 1 :0.4 recited in claims 53 and 54. Compare
Final Act. 11-12, with Appeal Br. 6-7; see In re Boesch, 617 F.2d 272,276
(CCPA 1980) ("[D]iscovery of an optimum value of a result effective
variable ... is ordinarily within the skill of the art."). Accordingly, we
sustain the rejection of claims 53 and 54 under 35 U.S.C. § 103(a).
Rejections 3-5 - Claims 10, 11, 14, 15, and 52
Although set forth under separate headings, Appellants do not make
additional patentability arguments for separately rejected claims 10, 11, 14,
15, and 52. Rather, Appellants argue that claims 10, 11, 14, 15, and 52 are
patentable over the cited art for the same reasons as claim 1, and the
additional prior art references, for example, Williams, Sainte Claire, and
Oldenburg, fail to remedy the deficiencies of Chirvase. Appeal Br. 7-8.
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Because we are not persuaded of reversible error in the Examiner's
rejection of claim 1 over Chirvase, we sustain the rejections of claims 10,
11, 14, 15, and 52 under 35 U.S.C. § 103(a).
DECISION
The rejection of claims 1, 3-5, 7-9, 12, 13, 16, and 56 under pre-AIA
35 U.S.C. § 102(b) or, in the alternative, underpre-AIA 35 U.S.C. § 103(a)
over Chirvase is affirmed.
The rejection of claims 6, 53-55, and 57-59 under 35 U.S.C. § 103(a)
over Chirvase is affirmed.
The rejection of claim 10 under 35 U.S.C. § 103(a) over Chirvase in
view of Williams and Sainte Catherine is affirmed.
The rejection of claims 11 and 15 under 35 U.S.C. § 103(a) over
Chirvase in view of Oldenburg is affirmed.
The rejection of claims 14 and 52 under 35 U.S.C. § 103(a) over
Chirvase in view of Williams is affirmed.
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
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