Ex Parte Yaniv

Board of Patent Appeals and Interferences

Jun 30, 2009

10633335 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZVI YANIV
____________

Appeal 2009-001779
Application 10/633,335
Technology Center 1700
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Decided:1 June 30, 2009
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001779
Application 10/633,335

Appellant seeks review under 35 U.S.C. § 134 of the final rejection of
claims 1-15 and 21-30. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A process comprising:

a) exposing a chemical species to nanoparticles such that
said chemical species physisorbs onto a surface of the
nanoparticles as an adsorbate, wherein such exposing is carried
out as an exposure selected from the group consisting of a gas
phase exposure, a solid phase exposure, and combinations
thereof;

b) irradiating the nanoparticles comprising the adsorbate
with radiation;

c) detecting altered photoluminescence properties of the
nanoparticles comprising the adsorbate as a result of the
chemical species being physisorbed onto the surface of the
nanoparticles; and

d) analyzing the altered photoluminescence properties by
comparing to one or more pre-defined altered
photoluminescence properties, to provide for an identifying of
the chemical species.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ouellet 5,457,073 Oct. 10, 1995
Weiss 5,990,479 Nov. 23, 1999
Barbera-Guillem 6,261,779 B1 Jul. 17, 2001
Daniels 2002/0004246 A1 Jan. 10, 2002
Vossmeyer 6,458,327 B1 Oct. 01, 2002
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Dimitrov 2003/0013091 A1 Jan. 16, 2003
West 6,530,944 B2 Mar. 11, 2003
Chee 6,544,732 B1 Apr. 08, 2003
Harris 2004/0009911 A1 Jan. 15, 2004
Hubby, Jr. 6,778,165 B2 Aug. 17, 2004
Ravkin 6,908,737 B2 Jun. 21, 2005

SUMMARY OF THE DECISION
We reverse.

THE REJECTIONS
1. Claims 1, 3, 5, 8, and 15 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Dimitrov.
2. Claims 1-5, 8, 10, 11, 14, 21, 22, 25, 26, and 30 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Weiss in view of Dimitrov or
Vossmeyer.
3. Claims 1-5, 8, 12, 15, 21, 22, 27, 29, and 30 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Daniels in view of Dimitrov or
Vossmeyer.
4. Claims 1-3, 5, 6, 8, 10, 11, and 14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chee in view of Dimitrov or
Vossmeyer.
5. Claims 1-3, 5, 6, 8, 10, 11, and 14 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Barbera-Guillem in view of Dimitrov or
Vossmeyer.
6. Claims 2, 21, 25, 26, and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dimitrov in view of Weiss or Daniels or Chee or
Barbera-Guillem.
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7. Claims 4 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dimitrov in view of Weiss.2
8. Claims 6 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dimitrov/Dimitrov3 in view of Weiss/Weiss in view of
Dimitrov or Vossmeyer/Daniels in view of Dimitrov or Vossmeyer, further
in view of Chee/Barbera-Guillem.
9. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Weiss et al. in view of Dimitrov or Vossmeyer/Daniels in view of
Dimitrov or Vossmeyer/Chee in view of Dimitrov or Vossmeyer/Barbera-
Guillem in view of Dimitrov or Vossmeyer, further in view of Harris.
10. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Weiss in view of Dimitrov or Vossmeyer/Daniels in view of Dimitrov
or Vossmeyer/Chee in view of Dimitrov or Vossmeyer/Barbera-Guillem in
view of Dimitrov or Vossmeyer, further in view of West.
11. Claims 12, 13, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weiss in view of Dimitrov or Vossmeyer/Chee in view of
Dimitrov or Vossmeyer/Barbera-Guillem in view of Dimitrov or Vossmeyer,
further in view of Daniels.
12. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Weiss in view of Dimitrov or Vossmeyer/Daniels in view of Dimitrov
or Vossmeyer/Chee in view of Dimitrov or Vossmeyer/Barbera-Guillem in
view of Dimitrov or Vossmeyer, further in view of Ravkin.
13. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dimitrov/Dimitrov in view of Weiss/Weiss in view of Dimitrov or

2 It appears that Appellant inadvertently omitted this rejection from the list
on page 3 of the Brief. Appellant does address this rejection on page 16 of
the Brief. On page 16 of the Brief, Appellant states that claims 4 and 22 are
rejected, whereas the Examiner states that claims 4 and 21 are rejected (Ans.
12). The Examiner indicates that a typographical error was made in the
Final Rejection, and that claim 21 should be cited rather than claim 22.
3 This terminology reflects the Examiner’s combination of the applied
references in making a § 103 rejection.
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Vossmeyer/Daniels in view of Dimitrov or Vossmeyer, further in view of
Harris.
14. Claims 25-29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dimitrov in view of Weiss/Weiss in view of Dimitrov or
Vossmeyer, further in view of Daniels.
15. Claim 28 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dimitrov/Dimitrov in view of Weiss/Weiss/Daniels in view of Ravkin.
16. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dimitrov/Dimitrov in view of Weiss/Weiss in view of Dimitrov or
Vossmeyer/Daniels in view of Dimitrov or Vossmeyer, further in view of
West.
17. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dimitrov/Dimitrov in view of Weiss/Weiss in view of Dimitrov or
Vossmeyer/Daniels in view of Dimitrov or Vossmeyer, further in view of
Chee.
ISSUES
Has Appellant shown that the Examiner reversibly erred in finding
that the references teach or suggest detecting photoluminescence properties
of the nanoparticles altered as a result of physisorption of the chemical
species onto the surface of the nanoparticles, as required by the claims?

FINDINGS OF FACT
Physisorption is a process in which the electronic structure of the
atom or molecule is barely perturbed upon adsorption of the atom or
molecule to a substrate. Wikipedia, the Free Encyclopedia,
http://en.wikipedia.org/wiki/Physisorption (last visited June 30, 2009).
In contrast, chemisorption is a process in which the electronic
structure of bonding atoms or molecules is changed and covalent or ionic
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bonds form between the atom or molecule and the substrate. Wikipedia, the
Free Encyclopedia, http://en.wikipedia.org/wiki/Chemisorption (last visited
June 30, 2009).
The Examiner has not identified teachings in the applied art of a
chemical species being physisorbed onto the surface of the nanoparticles.
The Examiner has not identified teachings in the applied art of altered
photoluminescence properties of the nanoparticles being detected as a result
of the chemical species being physisorbed onto the surface of the
nanoparticles.
PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Similarly, when determining whether a claim is obvious, an examiner
must make “a searching comparison of the claimed invention – including all
its limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995) (emphasis added).

ANALYSIS
1. The Rejection of claims 1, 3, 5, 8, and 15 under 35 U.S.C. § 102(e) as
being anticipated by Dimitrov.

Claim 1 recites “detecting altered photoluminescence properties of the
nanoparticles comprising the adsorbate as a result of the chemical species
being physisorbed onto the surface of the nanoparticles” in step c).
The Examiner recognizes that Dimitrov does not expressly disclose a
chemical species that is physisorbed onto the surface of the nanoparticle.
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Ans. 3. The Examiner states that “physisorbtion of a chemical species onto
the surface of nanoparticles is a first necessary step before being chemically
adsorbed onto the surface of the nanoparticles”. Ans. 3. The Examiner
refers to the references of Hubby and Ouellet in support of his theory that
physisorption must occur before chemisorption. Ans. 19.
Appellant argues that Dimitrov does not teach physisorption or
detecting changes in photoluminescence of the nanoparticle as a result of
physorbing an analyte onto its surface. Br. 6.
The Examiner does not respond to Appellant’s arguments that
Dimitrov does not describe detecting changes in the photoluminescence due
to the physisorption of an analyte on the surface of the nanoparticles. Nor
does the Examiner point to disclosure in Dimitrov indicating that
physisorbed species are detected, as opposed to chemisorbed species.
Whether chemical species physisorb before they chemisorb on the surface of
the nanoparticles is not important since Dimitrov does not describe detecting
the physisorbed species, as opposed to merely describing the detection of the
chemisorbed species.
Appellants have thus shown, by the preponderance of the evidence,
that Dimitrov does not describe every limitation of claim 1. Therefore, we
reverse the anticipation rejection.
2. The Rejection of claims 1-5, 8, 10, 11, 14, 21, 22, 25, 26, and 30
under 35 U.S.C. § 103(a) as being unpatentable over Weiss in view of
Dimitrov or Vossmeyer.
The critical issue is whether step c) of claim 1 is described or
suggested by the combined teachings of the references. Step c) recites
“detecting altered photoluminescence properties of the nanoparticles
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comprising the adsorbate as a result of the chemical species being
physisorbed onto the surface of the nanoparticles”.
The Examiner has not adequately explained how Weiss detects altered
photoluminescence properties of the nanoparticles as a result of the chemical
species being physisorbed onto the surface of the nanoparticles. As
Appellant points out, Weiss involves a nanocrystal linked to a linking agent
linked to an affinity molecule, forming a nanocrystal probe. Br. 8. This
nanocrystal probe bonds to a detectable substance in a material. The
Examiner points to no teaching that altered photoluminecence properties of
the nanoparticles are detected as a result of the chemical species (detectable
substance of the biological material) being physisorbed onto the surface of
the nanoparticles. If fact, Weiss describes two modes of using nanoparticles
for detecting substances of interest:
With respect to the absorption of energy by the probe of
the invention, when the excitation source is an electron beam,
or an X-ray source, the presence of the organo luminescent
semiconductor nanocrystal probe bonded to the detectable
substance of interest in the material being analyzed can be
ascertained using a commercially available energy absorption
or scattering or diffraction detection system wherein changes
in absorption or scattering cross section or in diffraction of
the material being analyzed can be detected, signifying the
presence of the probe in the material, which, in turn, indicates
the presence of the detectable substance to which the probe is
bonded in the material being analyzed. In addition, it may be
possible to use electron or X-ray sources to detect the presence
of the organo luminescent semiconductor nanocrystal probe
bonded to the detectable substance by using a conventional
detection system for the emission of visible light to observe
the visible emission in the narrow wavelength of emission of
the probe.

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Weiss, col. 9, ll. 37-55 (emphasis added).
From the above excerpt, it appears that Weiss detects changes in
absorption of the material being analyzed. It does not appear that Weiss
teaches the detection of altered photoluminescence properties of the
nanoparticles as a result of the chemical species (detectable substance of the
biological material) being physisorbed onto the surface of the nanoparticles.
Nor does the Examiner explain how or where Weiss provides such
teachings. In the alternative embodiment, Weiss teaches that electron or X-
ray sources can be used to detect the presence of the probe bonded to an
analyte by analyzing emission of visible light from the probe. This
alternative method also does not teach detection of altered
photoluminescence properties of the nanoparticles comprising the adsorbate
as a result of the chemical species being physisorbed onto the surface of the
nanoparticles.
The Examiner does not rely on Dimitrov and Vossmeyer to cure the
aforementioned deficiencies of Weiss.
In view of the above, we reverse the rejection of claims 1-5, 8, 10, 11,
14, 21, 22, 25, 26, and 30 under 35 U.S.C. § 103(a) as being unpatentable
over Weiss in view of Dimitrov or Vossmeyer.
3. The Rejection of claims 1-5, 8, 12, 15, 21, 22, 27, 29, and 30 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Daniels in
view of Dimitrov or Vossmeyer.
A critical flaw in the Examiner’s analysis is pointed out by Appellant
on page 11 of the Brief. Therein, Appellant correctly indicates that contrary
to the Examiner’s finding that Daniels teaches non-covalent attachment of a
detectable substance to a nanocrystal, paragraph [0088] of Daniels actually
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pertains to the binding between members of the binding pair, and not the
binding to the nanocrystal surface. Appellant also correctly points out that
production of “nanocrystal conjugates” involving a member of the binding
pair attached covalently to the nanocrystal by way of a linker species is
described in paragraphs 178-187 of Daniels. See especially paragraph
[0185].
As such, Daniels does not teach or suggest that altered
photoluminescence properties of the nanoparticles are detected as a result of
the chemical species (detectable substance of the biological material) being
physisorbed onto the surface of the nanoparticles. The Examiner does not
rely upon the secondary references to cure this deficiency.
In view of the above, we reverse the rejection of claims 1-5, 8, 12, 15,
21, 22, 27, 29, and 30 under 35 U.S.C. § 103(a) as being unpatentable over
Daniels in view of Dimitrov or Vossmeyer.
4. The Rejection of claims 1-3, 5, 6, 8, 10, 11, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Chee in view of Dimitrov or
Vossmeyer.
On page 12 of the Brief, Appellant explains that Chee does not teach
physisorption onto the surface of the nanocrystal. Chee teaches that beads
are “coded” with nanocrystals or that the nanocrystals can be used as labels
in assays. Chee, col. 4, ll. 45-51.
The Examiner does not point to any teaching in Chee which indicates
that altered photoluminescence properties of the nanoparticles are detected
as a result of the chemical species (detectable substance of the biological
material) being physisorbed onto the surface of the nanoparticles. Ans. 7-9.
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The Examiner does not explain how either of these systems meets the
aforementioned claim requirement. Ans. 7-9.
Hence, we agree with Appellant’s position. The Examiner does not
rely upon the secondary references to cure the aforementioned deficiencies
of Chee.
In view of the above, we reverse the rejection of claims 1-3, 5, 6, 8,
10, 11, and 14 under 35 U.S.C. § 103(a) as being unpatentable over Chee in
view of Dimitrov or Vossmeyer.
5. The Rejection of claims 1-3, 5, 6, 8, 10, 11, 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Barbera-Guillem in view of Dimitrov or
Vossmeyer.
On page 14 of the Brief, Appellant explains that Barbera-Guillem
does not teach that the nanocrystals interact whereby the analyte is
physisorbed onto the surface of the nanoparticles. As illustrative, Examples
4 and 5 in columns 16-24 of Barbera-Guillem describe the use of the
nanocrystals, including signal generation, but do not teach that altered
photoluminescence properties of the nanoparticles is detected as a result of
the chemical species being physisorbed onto the surface of the nanoparticles.
The Examiner does not point to any teaching in Barbera-Guillem
which indicates that altered photoluminescence properties of the
nanoparticles is detected as a result of the chemical species (detectable
substance of the biological material) being physisorbed onto the surface of
the nanoparticles. Ans. 9-10. The Examiner does not rely upon the
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secondary references to cure the aforementioned deficiencies of Barbera-
Guillem.
We therefore agree with Appellant’s position.
In view of the above, we therefore reverse the rejection of claims 1-3,
5, 6, 8, 10, 11, and 14 under 35 U.S.C. § 103(a) as being unpatentable over
Barbera-Guillem in view of Dimitrov or Vossmeyer.

6. The Other 35 U.S.C. § 103(a) Rejections
The remaining rejections (listed as numbers 6-17 on pages 4-5, supra)
also rely on Dimitrov or Weiss or Daniels or Chee or Barbera-Guillem as
evidence for teaching the detection of altered photoluminescence properties
of nanoparticles comprising the adsorbate as a result of the chemical species
being physisorbed onto the surface of the nanoparticles. Because the
aforementioned deficiencies of these references are not cured by the other
applied references of these remaining rejections (the Examiner does not rely
upon these references to cure these deficiencies), we reverse these rejections
also, for the reasons discussed, supra.

CONCLUSIONS OF LAW
Appellant has shown that the Examiner reversibly erred in finding that
the references teach or suggest detecting photoluminescence properties of
the nanoparticles altered as a result of physisorption of the chemical species
onto the surface of the nanoparticles, as required by the claims.

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DECISION
Each of the rejections is reversed.

REVERSED

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