LIQUID X PRINTED METALS, INC.

Patent Trials and Appeals Board

Aug 24, 2020

13777374 - (R) (P.T.A.B. Aug. 24, 2020)

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.
13/777,374 02/26/2013 Richard D. MCCULLOUGH 16-057 9298
30058 7590 08/24/2020
Dentons Cohen & Grigsby P.C.
625 Liberty Avenue
Pittsburgh, PA 15222-3152
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
08/24/2020 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):
ippatent.dcg@dentons.com
jennifer.magill@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD D. MCCULLOUGH, JOHN BELOT,
REBECCA POTASH, ELIZABETH SEFTON, and
CHRISTIANA M. PETRAK
____________

Appeal 2019-004285
Application 13/777,374
Technology Center 1700
____________

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing2 of our Decision3 entered June 4, 2020,
affirming the Examiner’s decision rejecting claim 76 under 35 U.S.C. §§
102 and 103 over Nojiri (US 4,939,114, issued July 3, 1990) and claims 1,

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Liquid X
Printed Metals, Inc. of Pittsburgh, Pennsylvania. Appeal Br. 1.
2 Appellant’s Request for Rehearing filed August 4, 2020 (“Request” or
“Req.”).
3 Decision on Appeal mailed June 4, 2020 (“Decision” or “Dec.”).
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32, and 55 under 35 U.S.C. § 103 over Nojiri in view of McCullough (US
2011/0111138 A1, published May 12, 2011). Req. 1.
We reviewed the Examiner’s rejection of independent claim 76 under
35 U.S.C. §§ 102 and 103 and of independent claims 1, 32, and 55 under 35
U.S.C. § 103. App. Br. 11, 15; Final Act. 6, 16; Dec. 7–20.
We have reconsidered our Decision of June 4, 202. We have
reviewed the arguments Appellant sets forth in the Request but we deny the
requested relief because Appellant has not persuaded us that we
misapprehended or overlooked any points of law or fact that would require a
different outcome. Therefore, we deny the request to modify our Decision.
Our reasoning follows.

Rejection under 35 U.S.C. §§ 102 and 103 over Nojiri
Contention 1-Cavitt’s compositions as representative
of Nojiri’s compositions in the Declaration evidence (Req. 6–8)
Appellant contends that we misapprehended or overlooked arguments
in the Appeal Brief and evidence in the Declaration under 37 C.F.R. § 1.132
by Dr. Chengeto Gwengo4 (hereinafter referred to as “Declaration” or
“Decl.” and to Dr. Gwengo as “Declarant”) demonstrating that Cavitt’s
compositions are equivalent to the compositions of the primary reference to
Nojiri and that support the proposition that Nojiri’s compositions are not
particle free. Req. 6–8; Appeal Br. 31; Decl. ¶¶ 11–13; Tr.5 8–10.

4 Appellant/Applicant submitted the Declaration on December 21, 2017 and
the Examiner entered it into the record in the Non-Final Office Action dated
February 13, 2018.
5 We refer to the “Oral Hearing Transcripts” made of record on April 21,
2020 as “Tr.”
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According to Appellant, both Cavitt and Nojiri teach forming mixtures of a
silver carboxylate with a small excess of an amine for short times without
purification (removal of excess amines). Req. 6; Appeal Br. 29; Nojiri
col. 4, ll. 15–45; Cavitt col. 2, l. 54–col. 3, l. 56. Appellant asserts that the
Declaration compares Cavitt’s compositions against inventive compositions
formed using a larger excess of the amine and purified by removing the
excess amines, as disclosed on page 16 of the Specification. Req. 6–7.
Appellant asserts that the comparisons in the Declaration are sufficient to
indicate that Cavitt and Nojiri disclose similar and comparable compositions
and that neither reference considered premature silver particulate formation
as a liability in the impregnation of silver catalysts. Req. 7. Appellant
further asserts that the comparison in the Declaration is sufficient to
establish that compositions, such as Cavitt’s and Nojiri’s, formed without a
large excess of amine, were found to precipitate and were thus unsuitable for
a purification step. Req. 7. Thus, Appellant argues that the compositions of
Cavitt and Nojiri are similar and comparable compositions and neither
reference considered premature silver particulate formation as a liability in
the impregnation of silver catalysts. Req. 8.
We are unpersuaded. Our Decision clearly indicates that we gave
appropriate weight to the Declaration evidence, including the discussion as
to whether Cavitt’s compositions are adequate to represent the compositions
of the primary reference to Nojiri. Dec. 11–12. As our Decision states,
“[t]he Appeal Brief, Reply Brief, and Declaration [] fail to explain how or
why Cavitt's compositions are representative of Nojiri's compositions.”
Dec. 11. In the Request and at Oral Hearing, Appellant presents no
evidence supporting the assertion that Cavitt’s compositions are equivalent
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to Nojiri’s composition other than they both teach making the composition
with a small excess of amine without purification. Req. 7; Tr. 8–10. In fact,
Appellant concedes in the Request and at Oral Hearing that the compositions
are only “comparable” (Req. 8) “[t]o some extent” (Tr. 10). Moreover, as
we state in our Decision (Dec. 12), “Appellant does not provide an adequate
explanation why the fact that both references use 30% of an amine ligand to
make the metal complexes is sufficient for one skilled in the art to
understand that Cavitt’s compositions are representative of Nojiri’s
compositions.”
Therefore, contrary to Appellant’s contentions, we gave appropriate
weight to the Declaration evidence, including the allegation that Cavitt’s
compositions are representative of Nojiri’s compositions.

Contention 2- Nojiri does not teach a particle-free
composition (Req. 4–5)

Appellant contends that we misapprehended or overlooked specific
discussion provided in the Appeal Brief and Declaration evidence
demonstrating that Nojiri does not teach a particle-free composition. Req. 4.
Specifically, Appellant contends that (1) Section VII(2)(c) of the Appeal
Brief includes a discussion explaining that Nojiri’s compositions would not
be particle-free because Nojiri’s methods leave unreacted excess amine in
solution that would lead to the formation of carbamates that destabilize the
silver species resulting in the formation of silver particulates (Req. 4; Appeal
Br. 13), (2) the Declaration shows that solutions made from a mixture of a
silver carboxylate and a slight excess of diamine in a aqueous solvent system
were found to quickly form silver mirrors and silver particles in solution
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even before the solution could be deposited (Req. 4; Declaration ¶¶ 13, 15,
16, Tables 1, 3, 4), and (3) the examples in the Declaration are reasonably
commensurate with the broad scope of the presently claimed invention
because they include specific comparative examples to the cited prior art of
Nojiri comprising only a small excess of the amine, examples of the
presently claimed invention, and an intermediate example to demonstrate
that the excess amount of amine required to form the presently claimed
stoichiometric complexes far exceeds the amounts indicated in the cited
prior art. Req. 4–5.
We remain unpersuaded. The Declaration evidence that Appellant
relies upon to support these arguments is insufficient to establish that
Nojiri’s compositions are particle free for the reasons we give with respect
to Contention 1 above and in our Decision (Dec. 11–12).
Therefore, Appellant’s arguments with respect to Contention 2 are not
substantiated by the Declaration evidence because it does not show
adequately that Nojiri’s compositions are not particle free nor does it
compare the closest prior art (Nojiri) to the comparative examples.

Contention 3- Claim limitation “formulated for deposition on a
substrate and conversion of the deposit to a continuous-conductive
metal film” denotes an actual state of configuration of the composition
that fundamentally ties formation of a continuous-conductive film to
the physical characteristics of the composition being particle-free
(Req. 5–6)

Appellant contends that we misapprehended or overlooked arguments
in the Appeal Brief that the claim limitation “formulated for deposition on a
substrate and conversion of the deposit to a continuous-conductive metal
film” specifically “denotes an actual state of configuration of the
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composition that fundamentally ties formation of a continuous-conductive
film to the physical characteristics of the composition (i.e., that the
compositions of the presently claimed invention are particle-free).” Req. 5.
According to Appellant, the examples provided in the Declaration
specifically address that Nojiri’s compositions were not capable of forming
continuous-conductive metal films. Req. 5 (citing to Appeal Br. 12, 14 and
Decl. ¶ 16 and Table 4). Appellant additionally argues that Nojiri’s
conversion or heat treatment is essentially the same as the presently claimed
invention and that one of skill in the art would understand that according to
the disclosure in the specification and full record of the instant application,
the claim element “formulated for deposition on a substrate and conversion
of the deposit to a continuous-conductive metal film” does not describe a
result of heat treatment of the composition but rather describes a property of
the composition, i.e., that the composition is particle-free and is capable of
forming a continuous-conductive metal film. Req. 5–6.
We have considered Appellant’s arguments for Contention 3 and
remain unpersuaded. Appellant again relies on the Declaration evidence as
specifically addressing that Nojiri’s compositions were not capable of
forming continuous-conductive metal films. Req. 5. However, as we
discuss above, the Declaration evidence is insufficient to establish that
Nojiri’s compositions are particle free for the reasons we give with respect
to Contention 1 above and in our Decision (Dec. 11–12).
Appellant additionally asserts that Nojiri’s heat treatment step is the
same as the claimed invention and both result in different outcomes (particle
v. particle free). Req. 5. This argument does not address the finding that
Nojiri's disclosure suggests that deposition of the metal in a specific form
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depends on the treatment of the solution after impregnation. Dec. 10; Nojiri
col. 4, ll. 41–45. This finding is consistent with the Examiner’s explanation
that Nojiri’s composition is free of particles before being subjected to the
requisite treatment to form the particles. Ans. 17 (“The prior art
composition, which contains the silver complex compound dissolved a
solvent, is capable of being formed into a conductive film by a person of
ordinary skill in the art through routine experimentation”), 18.

Rejection under 35 U.S.C. § 103 over Nojiri and McCullough
Contention 1- Nojiri teaches a non-stoichiometric complex (Req. 11)
Appellant contends that we misapprehended or overlooked
Declaration evidence demonstrating that (1) forming metal complexes using
only a small excess of the amine likely does not lead to production of
stoichiometric metal complexes (Req. 11; Decl. ¶ 16 (“likely failed to
promote complete conversion of all reactants to products, which is observed
by limited solubility”)) and (2) failure to remove the excess unreacted amine
leads to compositions comprising particles (Req. 11; Decl. ¶ 13 (“amines
absorb moisture and carbon dioxide resulting in formation of unstable
carbamates. Such speciation of amines may destabilize diaminosilver (I)
carboxylates, which often results in ... particle formation”).
We are unpersuaded. Our Decision indicates that we gave appropriate
weight to the Declaration evidence consistent with our discussion above
with respect to Contention 1 of the §§ 102 and 103 rejections over Nojiri
alone. Dec. 17 (“We again find the evidence insufficient to overcome a
prima facie case of obviousness for the reasons we give in our previous
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discussion of the Declaration related to the anticipation/ obviousness
rejections of claim 76”).

Contention 2- Nojiri provides no motivation to purify the complex
from any excess amine (Req. 8–9)

Appellant contends that Nojiri provides no motivation to purify the
complex from any excess amine and that one of skill in the art would not
have had a reasonable expectation of success that a composition absent
solubilizing amount of amines would be stable, whether formed or
solubilized in a polar or nonpolar solvent system. Req. 8; Appeal Br. 21.
We are again unpersuaded. As we indicate in our Decision, this
argument lacks persuasive merit because they do not address the rejection
the Examiner presents. Dec. 15–16. Our Decision states that
[t]he Examiner's rejection is based on the combined
teachings of Nojiri and McCullough. 7 Final Act. 7-8. The
Examiner relies on McCullough's teachings to establish that it is
known to remove excess unreacted amine after formation of a
silver complex compound by evaporation under vacuum. Ans.
19; McCullough, ¶ 267. Moreover, like McCullough, Nojiri
teaches the use of excess amines in forming metal complexes.
Nojiri col. 4, 11. 39–41.
One skilled in the art would have reasonably expected
that some of Nojiri’s excess amines would remain unreacted
after forming the desired complexes.
Thus, Appellant does not explain adequately why one
skilled in the art, using no more than ordinary creativity, would
not have been able to modify Nojiri's teachings to incorporate
McCullough's technique for removing unreacted amines as
taught by McCullough.
Dec. 16–17.
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To the extent that Appellant is relying on the Declaration evidence in
support of the noted arguments, we maintain our position that the
Declaration evidence is insufficient to support these arguments for the
reasons we give above.

Contention 3- One skilled in the art would find it burdensome to
arrive at the claimed invention from the combined teachings of Nojiri
and McCullough (Req. 9–11)

Appellant contends that it would be burdensome for one skilled in the
art to arrive at the claimed invention from the teachings of the cited art
because the skilled artisan would have to make a series of specific selections
from the possible nonpreferred aspects of the cited prior art. Req. 9–11.
We have considered Appellant’s arguments for Contention 3 and
remain unpersuaded. In our Decision, we addressed Nojiri’s teachings of
adding an amine ligand at any stage in the formation of the silver catalyst
that Appellant notes. Req. 9 (citing to Appeal Br. 18 and Nojiri col. 4, ll. 4–
6.) Specifically, our Decision states that
this would only mean that Nojiri contemplates a number of
different embodiments, including Appellant’s technique for
adding the amine ligand. Appellant does not explain adequately
why such a broader teaching would lead one skilled in the art
away from any specifically disclosed technique for the addition
of an amine ligand.

Dec. 17.
Moreover, the test for obviousness is not whether it would be burdensome
for one skilled in the art to arrive at the claim invention from the teachings
of the prior art. Instead, “the test [for obviousness] is what the combined
teachings of the references would have suggested to those of ordinary skill
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in the art.” In re Keller, 642 F.2d 413, 425–426 (CCPA 1981). Further, it
has been established that “the [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Appellant’s arguments do not explain
adequately why it would be burdensome for one skilled in the art to modify
the teachings of Nojiri by removing the excess amine, as taught by
McCullough, and arrive at the claimed invention. Nor does Appellant
address adequately the reasons the Examiner presents for combining the
teachings of the cited art. Final Act. 7–8.
Therefore, Appellant has not established that our Decision
misapprehended or overlooked any particular point of law or fact that would
require a different outcome. The factual findings the Examiner relies upon
are supported amply by the record and are sufficient, when considered in
light of all of the evidence of record, to establish the anticipation and/or
obviousness for the subject matter of claims 1, 32, 55, and 76 as well as their
respective dependent claims. Final Act. 6–17; Ans. 15–23; Dec. 7–23.

CONCLUSION
In summary:
Outcome of Decision on Rehearing:

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted
76 102(b)/103(a) Nojiri 76
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75
103(a) Nojiri, McCullough
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75

6, 41 103(a) Nojiri, McCullough, Takano 6, 41
36 103(a) Nojiri, McCullough, Jan 36
14, 38 103(a) Nojiri, McCullough, Cavitt 14, 38

1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75
103(a) Nielsen
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75

6, 41 103(a) Nielsen, Takano 6, 41
36 103(a) Nielsen, Jan 36
14, 38 103(a) Nielsen, Cavitt 14, 38
Overall
Outcome
1–8, 13–
23, 25,
27–30,
32–41, 54,
55, 73–76

Final Outcome of Appeal after Rehearing:

Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 13–
23, 25,
27–30,
112, first
paragraph Written Description
1–8, 13–
23, 25,
27–30,
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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
32–41, 54,
55, 73–75
32–41, 54,
55, 73–75
76 102(b)/103(a) Nojiri, 76
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75
103(a) Nojiri, McCullough
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75

6, 41 103(a) Nojiri, McCullough, Takano 6, 41

36 103(a) Nojiri, McCullough, Jan 36

14, 38 103(a) Nojiri, McCullough, Cavitt 14, 38

1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75
103(a) Nielsen
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75

6, 41 103(a) Nielsen, Takano 6, 41
36 103(a) Nielsen, Jan 36
14, 38 103(a) Nielsen, Cavitt 14, 38
Overall
Outcome
1–8, 13–
23, 25,
27–30,
32–41, 54,
55, 73–76

This Decision on the Request for Rehearing incorporates our
Decision, mailed June 4, 2020, and is final for the purposes of judicial
review. See 37 C.F.R. § 41.52(a)(1).
DENIED