C3Nano Inc.

Patent Trials and Appeals Board

Feb 1, 2021

2020001150 (P.T.A.B. Feb. 1, 2021)

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.
14/627,400 02/20/2015 Xiqiang Yang 5074.14US02 1325
62274 7590 02/01/2021
CHRISTENSEN, FONDER, DARDI & HERBERT PLLC
11322 86th Ave. N.
Maple Grove, MN 55369
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
docket@cfd-ip.com
patents@cfd-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte XIQIANG YANG, YADONG CAO, YONGXING HU, HUA GU,
YING-SYI LI, and AJAY VIRKAR
__________

Appeal 2020-001150
Application 14/627,400
Technology Center 1700
__________

Before FRANCISCO C. PRATS, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, 12–22, and 24–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies C3Nano, Inc., as the real party in
interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Specification discloses that “[t]ransparent polymer films
are used in a wide range of products, such as electronic displays. . . .
Transparent conductors can be used for several optoelectronic applications
including, for example, touch-screens, liquid crystal displays (LCD), flat
panel displays, organic light emitting diode (OLED), solar cells and smart
windows.” Spec. 1.
Appellant’s invention “relates to nanoscale colorants incorporated into
transparent films to influence the hue of the films.” Spec. 1. In particular,
“[i]t has been discovered that the color of the transparent conductive films
can be made less yellow, i.e., smaller absolute value of b*, through the
incorporation of metal nanoplates, metal nanoshells, nanoribbons, or other
nanoscale colorants, e.g., pigments.” Id. at 4. The Specification explains
that “b* relates to the position of the color between yellow and blue” in a set
of three-dimensional coordinates determined by the International
Commission on Illumination (CIE) in relation to a standard white point. Id.
Appellant’s Specification explains that, although certain types of
nanopigments have proved particularly effective in lowering b* when
incorporated into films, a variety of differently shaped pigments with a
dimension of less than about 100 nm are useful for decreasing a film’s b*
value:
For the lowering of the b* scale of a silver based sparse metal
conductive element, silver nanoplates and gold nanoshells have
been found particularly effective and such elements are
commercially available. A wide range of pigments are known
and widely used commercially. Representative pigments can be
processed or are available in nanoscale formats. Generally,
nanoscale refers to the average of at least one dimension of the
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particulates (dimensional cut-off) being no more than about 100
nm, in further embodiments no more than about 75 nm and in
additional embodiments no more than about 50 nm. Thus,
suitable nanoscale particulates can include, for example,
nanoplates with one dimension, the average thickness, being no
more than the dimensional cut-off, nanoribbons, which have
one or possibly two dimensions, average thickness and/or
average width, being no more than the dimensional cut-off,
nanoparticles with three dimensions, e.g., the average diameters
along the particle principle axes, being no more than the
dimensional cut-off and various other possible structures with
two dimensions being no more than the dimensional cut-off.
Metal nanoplates, metal nanoshells and other metal
nanostructures can provide tuned color contributions based on
size through hypothesized surface plasmon resonances,
although Applicant does not wish to be limited by theory.
Nanoscale metal elements can have various coatings, and
commercial versions may have coating choices.
Spec. 14.
Appellant’s claim 1 illustrates the appealed subject matter and reads
as follows:
1. A transparent conductive film comprising a substrate, a
transparent conductive layer supported by the substrate, a
coating and one or more nanoscale colorants, wherein a value
of b* for the film is reduced at least about 0.1 units and total
transmittance of visible light in percent is not decreased by
more than about 2 relative to the corresponding film without the
nanoscale colorants.
Appeal Br. 37.
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The following rejections are before us for review:
(1) Claims 1, 4, 6–10, and 12–17, under 35 U.S.C. § 103 as being
unpatentable over Allemand2 (Ans. 3–6);3
(2) Claim 3, under 35 U.S.C. § 103 as being unpatentable over
Allemand and Oldenburg4 (Ans. 6–7); and
(3) Claims 2, 5, 18–22, and 24–26, under 35 U.S.C. § 103 as being
unpatentable over Allemand and Kydd5 (Ans. 7–12).

OBVIOUSNESS—ALLEMAND
Analysis—Claim 1
In rejecting claim 1, the Examiner cited Allemand as disclosing a
transparent conductive film having layers corresponding to each of the
layers recited in claim 1, including a coating layer that contains silver
nanowires, which the Examiner found correspond to the nanoscale colorants
recited in claim 1. Ans. 3.
The Examiner cited to examples in Allemand as evidence that its
films meet claim 1’s limitation that the colorants reduce light transmittance
by less than 2%. See Ans. 3 (“[I]n the two experimental samples of
Allemand, the conductive layer 16 reduces the transparency of the overall
film from 19.2% to 18.2%, and 27.5% to 26.9% (i.e., reduction in

2 US 2010/0243295 A1 (published Sept. 30, 2010).
3 In restating the obviousness rejection citing only Allemand, the Examiner’s
Answer lists claim 11 among the rejected claims. Ans. 3. Claim 11 has
been canceled, however. See Appeal Br. 38.
4 US 2001/0002275 A1 (published May 31, 2001).
5 US 6,274,412 B1 (issued Aug. 14, 2001).
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transmittance of 1% and 0.6%, respectively), which is within the claimed
range (para. [0450] and [0453]).”).
As to claim 1’s requirement for the nanoscale colorants to reduce the
value of b* for the film by at least about 0.1 units, the Examiner reasoned
that because
both the transmittance and b* value of the coating layer are
determined by the nanoscale colorants (as is claimed), it is not
seen how the b* value of Allemand would not necessarily be
within the claimed range, since it also has a total transmittance
of the claimed range, and is made of the materials of the present
specification.
Ans. 3–4; see also Ans. 13–15 (determining that the dimensions and
materials of nanoscale colorants disclosed in Appellant’s Specification as
providing the b* value reduction recited in claim 1 are the same as those
disclosed in Allemand).
As to the b* value reduction recited in claim 1, the Examiner
alternatively determined that “the amounts of silver nanowires within the
coating layer of Allemand which naturally flow from the teachings of
reduced conductivity and lowered reduction in transmittance are expected to
provide a b* range which overlaps the claimed range.” Ans. 4.
Appellant contends, for a number of reasons, that the Examiner erred
in determining that the nanowires described in Allemand would necessarily,
that is, inherently, provide the b* value reduction recited in Appellant’s
claim 1. Appeal Br. 13–19; Reply Br. 3–4.
Having carefully considered all of the evidence and arguments
advanced by Appellant and the Examiner, Appellant does not persuade us
that the Examiner erred reversibly in determining that Allemand would have
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suggested, and therefore would have rendered obvious, a transparent
conductive film encompassed by claim 1.
It is well settled that “‘there is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.’” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In
re Swinehart, 439 F.2d 210, 212 (CCPA 1971)). Nonetheless,
“‘[f]unctional’ terminology may render a claim quite broad . . .[;] a claim
employing such language covers any and all embodiments which perform
the recited function.” Swinehart, 439 F.2d at 213.
Thus, as explained by our reviewing court’s predecessor, when the
Office advances a reasonable basis for concluding that a functional property
recited in a claim at issue is present in a prior art product, the Office may
require an applicant to demonstrate that the prior art product lacks the
claimed functional property. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977). As explained in Best, whether the rejection at issue “is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.” Id.
In the present case, Appellant does not persuade us that the Examiner
failed to advance a reasonable basis for determining that the conductive film
products taught or suggested by Allemand have the reduced b* value recited
in Appellant’s claim 1.
We acknowledge, as Appellant contends, that Appellant’s
Specification exemplifies using silver nanoplates to reduce the b* value of
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films, without decreasing transmittance, both to the degrees encompassed by
Appellant’s claim 1. See Spec. 38.
However, as noted above, the Specification also discloses that a
variety of differently shaped nanoscale pigments can be incorporated into
films to reduce the b* value. See Spec. 4 (“[T]he color of the transparent
conductive films can be made less yellow, i.e., smaller absolute value of b*,
through the incorporation of metal nanoplates, metal nanoshells,
nanoribbons, or other nanoscale colorants, e.g., pigments.”) (emphasis
added); see also id. at 14 (disclosing that, although commercially available
silver nanoplates and gold nanoshells “have been found particularly
effective” for reducing the b* value of films, “suitable nanoscale particulates
can include, for example, nanoplates . . . , nanoribbons, . . . nanoparticles
. . . , and various other possible structures with two dimensions being no
more than the dimensional cut-off” of no more than about 100 nm)
(emphasis added).
Indeed, directly contrary to Appellant’s repeated and unsupported
assertion that silver nanowires increase a film’s b* value (see, e.g., Appeal
Br. 16–17), Appellant’s Specification discloses that one type of silver
nanowire used in the examples decreases the b* value, as recited in
Appellant’s claim 1. See Spec. 37 (“The transparent conductive films
formed with nanowires from Supplier 2 (AgNW-2) initially had lower
values of b* without any compensating nanoscale colorants.”) (emphasis
added).
Turning to the prior art, Allemand discloses incorporating, into
conductive films, nanoparticles made of the same metal (silver), and having
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dimensions consistent with the dimensions disclosed in Appellant’s
Specification as providing the reduced b* value.
Specifically, Allemand discloses “a transparent conductor based on a
conductive layer of nanostructures (e.g., nanowires).” Allemand ¶ 71; see
also id. ¶ 86 (“As used herein, ‘metal nanowire’ refers to a metallic wire
comprising element metal, metal alloys or metal compounds (including
metal oxides). At least one cross-sectional dimension of the metal nanowire
is less than 500 nm, and less than 200 nm, and more preferably less than
100 nm.”) (emphasis added); id. ¶ 87 (discussing prior art disclosures in
relation to large scale production of silver nanowires); id. ¶ 435 (Allemand’s
Example 8 using silver nanowires).
Similar to Appellant’s Specification, Allemand discloses that a variety
of different nanostructures may be used in its films. See Allemand ¶ 73
(“The nanostructures can be of any shape or geometry.”); id. ¶ 75 (“It should
be noted that although the present disclosure describes primarily nanowires
(e.g., silver nanowires), any nanostructures within the above definition can
be equally employed.”).
Moreover, as the Examiner found, and Appellant does not dispute,
Allemand’s Example 12 describes a film containing a nanowire coating that
did not decrease the film’s transmittance, to a degree encompassed by
Appellant’s claim 1. See Allemand ¶¶ 447–453.
Thus, to summarize, Appellant’s Specification discloses that a variety
of differently shaped nanoscale pigments having a dimensional cut-off of no
more than about 100 nm, exemplified by silver nanoplates, can be
incorporated into conductive films to reduce the film’s b* value without
decreasing transmittance, and that certain silver nanowires can also reduce
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the b* value. And, Allemand describes incorporating, into conductive films,
silver nanowires preferably having a largest dimension of less than 100 nm,
with exemplified embodiments undisputedly exhibiting a transmittance
degree within the range recited in Appellant’s claim 1.
Because Allemand teaches using nanowires having the same
dimensions as described in Appellant’s Specification as providing claim 1’s
reduction in the b* value, and formed of the same metal (silver), and because
Appellant’s Specification discloses that a variety of differently shaped
nanoscale pigments, including silver nanowires, can provide the claimed b*
value reduction, Appellant does not persuade us that the Examiner failed to
advance a reasonable basis for determining that the conductive film products
suggested by Allemand have the reduced b* value recited in Appellant’s
claim 1. See Appeal Br. 13–19; Reply Br. 3–4. Because Appellant points to
no persuasive evidence adequately rebutting the Examiner’s reasonable
determination that a conductive film prepared according to Allemand’s
teachings would have a b* value encompassed by Appellant’s claim 1 (see
id.), we affirm the Examiner’s rejection of claim 1 over Allemand. See In re
Best, 562 F.2d at 1255. Claims 4, 7, 9, and 13–17 were not argued
separately from claim 1, and therefore fall with claim 1. See 37 C.F.R.
41.37(c)(1)(iv) (2018).
Analysis—Claim 6
Appellant’s claim 6 recites “[t]he transparent conductive film of claim
1 wherein the haze in percent units does not increase by more than 0.5
relative to the corresponding film without the nanoscale colorant.” Appeal
Br. 37.
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In rejecting claim 6 over Allemand, the Examiner found that
“Allemand expressly discloses that the haze of the overall film is no more
than 0.5%, or no more than 0.25% (para. [0125]).” Ans. 4. The Examiner
“submitted that the haze of the film cannot be increased by more than 0.5
due to the presence of the silver nanowires (i.e., nanoscale colorants), if the
overall haze prescribed by Allemand is to be less than 0.5%.” Id.
In addition to reiterating its argument, addressed above, that
Allemand’s silver nanowires would raise rather than lower b*, Appellant
contends:
The haze values in the Examples of Allemand are: Table
2, all greater than 4.5%; Table 3, all greater than 3.3%; Table 4,
all greater than 4.5%; and Table 5, the conductive embodiments
were greater than 2%. The haze of the silver nanowires is
dependent on many factors including the concentration of the
nanowires. . . . To the extent that the Examiner is relying on
inherency, the haze certainly does not necessarily fall within the
claimed ranges based on the Examples of Allemand itself.
Appeal Br. 20; see also Reply Br. 5.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
the Examiner erred in maintaining the rejection of claim 6.
It is well settled that “[a]ll the disclosures in a reference must be
evaluated, including nonpreferred embodiments, and a reference is not
limited to the disclosure of specific working examples.” In re Mills, 470
F.2d 649, 651 (CCPA 1972) (citations omitted). In the present case, as the
Examiner found, aside from its examples, Allemand discloses that its films
may have a haze value within the range recited in Appellant’s claim 6, and
that smaller nanowires will produce lower haze:
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Haze (H %) is an index of light diffusion. It refers to the
percentage of the quantity of light separated from the incident
light and scattered during transmission. Unlike light
transmission, which is largely a property of the medium, haze is
often a production concern and is typically caused by surface
roughness and embedded particles or compositional
heterogeneities in the medium. Typically, haze of a conductive
film can be significantly impacted by the diameters of the
nanostructures. Nanostructures of larger diameters (e.g.,
thicker nanowires) are typically associated with a higher haze.
In various embodiments, the haze of the transparent conductor
is no more than 10%, no more than 8%, or no more than 5%
and may be as low as no more than 2%, no more than 1%, or no
more than 0.5%, or no more than 0.25%.
Allemand ¶ 125 (emphases added).
Given Allemand’s express disclosure that films with haze values
falling within the range recited in Appellant’s claim 6 are useful
embodiments of its invention, and further given the reasonableness,
discussed above, of the Examiner’s determination that a film prepared
according to the teachings in Allemand would meet the limitations of claim
1, Appellant does not persuade us of reversible error in the Examiner’s
rejection of claim 6. We therefore affirm the Examiner’s rejection of claim
6 over Allemand.
Analysis—Claim 8
Appellant’s claim 7 recites “[t]he transparent conductive film of claim
1 having a total transmittance of visible light of at least about 85% and a
haze of no more than about 1.2%, wherein the transparent conductive layer
has a sheet resistance of no more than about 100 ohms/sq.” Appeal Br. 37.
Appellant’s claim 8, in turn, recites “[t]he transparent conductive film
of claim 7 wherein the absolute value of b* and a* in the color scale are each
no more than about 1.” Appeal Br. 38.
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In rejecting claim 7 over Allemand, the Examiner cited paragraphs
322 and 125 of Allemand as disclosing resistance and haze values
overlapping with the ranges of those parameters recited in the claim. Ans. 4.
As to claim 8, the Examiner reasoned:
Although Allemand does not expressly disclose a* and b*
values, the film of Allemand is substantially identical in
structure and composition to the claimed invention, and
therefore the claimed a* and b* values of each no more than
about 1 are expected. Furthermore, since Allemand teaches
several of the previously claimed properties (i.e., light
transmittance, haze, and resistance), it is not seen how the film
of Allemand could possess the previously claimed properties,
and yet not further possess the presently claimed properties.
Ans. 4–5.
Appellant contends that the Examiner failed to provide an evidentiary
basis for rejecting claim 8 because it has “no idea” what the allegedly
“identical structure in Allemand may be since the Examiner points to no
specific structures and does not explain this assertion. Appellant has not
found any nanoplates, nanoribbons, nanoshells or any nanoscale colorants
with a blue color in Allemand that can be expected to lower b*.” Appeal Br.
21.
The Examiner responds:
[T]he nanostructures of Allemand have the dimensions taught
by the present specification which lead to the claimed a* and b*
values (i.e., the nanostructures of the claimed invention and
prior art are substantially identical in properties due to their
substantially identical dimensions, from which said properties
flow). The Examiner is not looking to a specific Example in
the present specification, but rather considering which
structures are explicitly taught by the present specification to
have the claimed a* and b* values.
Ans. 18.
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Appellant replies that “[n]o structures taught in Allem[a]nd are even
similar in any way to the current inventive structures.” Reply Br. 5.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
the Examiner erred in maintaining the rejection of claim 8.
As to Appellant’s contention that Allemand does not expressly
describe “nanoplates, nanoribbons, nanoshells or any nanoscale colorants
with a blue color that can be expected to lower b*” (Appeal Br. 21), neither
claim 8, nor claims 1 and 7 from which claim 8 depends, recites nanoplates,
nanoribbons, nanoshells, or nanoscale colorants with a blue color. See
Appeal Br. 37–38. Thus, to the extent Appellant argues that claim 8 requires
a specific shape or color of nanoscale colorant, Appellant’s argument is not
directed to a feature recited in the claim.
Rather than reciting a specific shape or type of nanoscale colorant,
claim 8, through its dependency on claim 1, uses functional limitations to
define the claimed product. As discussed above in relation to claim 1, to
meet those functional limitations, Appellant’s Specification discloses that a
variety of differently shaped nanoscale pigments smaller than about 100 nm,
exemplified by silver nanoplates, can be incorporated into conductive films
to reduce the film’s b* value without decreasing transmittance, and that
certain silver nanowires can also reduce the b* value.
As also discussed above, Allemand describes incorporating, into
conductive films, silver nanowires preferably having a largest dimension of
less than 100 nm, with exemplified embodiments undisputedly exhibiting a
transmittance degree within the range recited in Appellant’s claim 1.
Appellant does not persuade us, therefore, that no structures in Allemand are
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similar to those taught in Appellant’s Specification as meeting the functional
limitations recited in claim 8. Also, in addition to pointing to the 100 nm
size of Allemand’s nanoparticles, the Examiner’s rejection identified the
films in Example 12 of Allemand (see Ans. 3), contrary to Appellant’s
contention that the Examiner failed to identify specific teachings in
Allemand to support the rejection.
Because Appellant does not persuade us, for the reasons discussed,
that the evidence of record fails to support the Examiner’s rejection of claim
8, we affirm the Examiner’s rejection of that claim over Allemand.
Analysis—Claim 10
Appellant’s claim 10 reads as follows:
10. The transparent conductive film of claim 1 wherein
transparent conductive film comprises a sparse metal
conductive layer and wherein the nanoscale colorants and a
polymer binder are in the sparse metal conductive layer and the
nanoscale colorants are at a concentration in the layer from
about 0.1 wt% to about 50 wt%.
Appeal Br. 38.
In traversing the Examiner’s rejection of claim 10, Appellant contends
that, in addition to the concentration limitations, “[c]laim 10 further recites
that the nanoscale colorants are in the layer with the transparent conductor.
Respectfully, the Examiner has seemed to overlook this aspect of the
invention of claim 10.” Appeal Br. 22; see also Reply Br. 10 (“The Answer
is silent on the issue of the nanoscale colorants being in the layer with the
transparent conductor.”).
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
the Examiner erred in maintaining the rejection of claim 10. In rejecting
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claim 10, the Examiner expressly stated that the conductive layer of
Allemand’s films includes the nanoscale colorants (the metal nanowires),
and cited paragraph 155 of Allemand in support of that finding. See Ans. 5.
(“[T]he transparent layer comprises a sparse metal conductive layer, and the
coating solution used to form the transparent conductive layer comprises . . .
0.05 to 1.4% metal nanowires . . . (para. [0155]).”).
Appellant does not persuade us, therefore, that the Examiner failed to
explain sufficiently why Allemand teaches that the nanoscale colorants are
present in the conductive layer, as recited in claimed 10. We therefore
affirm the Examiner’s rejection of claim 10 over Allemand.
Analysis—Claim 12
Appellant’s claim 12 recites “[t]he transparent conductive film of
claim 1 wherein the nanoscale colorants comprise metal nanoribbons.”
Appeal Br. 38.
Appellant’s Specification explains that “[s]uitable nanoscale
particulates include . . . nanoribbons, which have one or possibly two
dimensions, average thickness and/or average width, being no more than the
dimensional cut-off” of no more than about 100 nm. Spec. 14.
In rejecting Appellant’s claim 12, the Examiner found that
Appellant’s Specification “defines nanoribbons as nanostructures having one
or two dimensions of less than 100 nm in magnitude.” Ans. 5. The
Examiner found that, because the “nanowires, or more broadly the
nanostructures, of Allemand have at least one dimension which is less than
500 nm, but more typically less than 100 nm (Allemand: para. [0072]) . . . ,
the nanostructures of Allemand are nanoribbons, in light of the definition
provided in the present specification.” Id.
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Appellant argues, for a number of reasons, that a skilled artisan “will
recognize that the nanowires of Allemand are not nanoribbons.” Appeal Br.
23.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
the Examiner erred in maintaining the rejection of claim 12.
Even assuming for the sake of argument that a skilled artisan would
have understood the ordinary meaning of “ribbon” to mean a “thin band of
material” (Appeal Br. 23), the claim term at issue is “nanoribbon” not
“ribbon.” Appellant points to no persuasive evidence supporting its
assertion that “[n]anoribbons are simply nanoscale ribbons, which have a
different shape than a nanowire, which are not wide and flat.” Id.
Moreover, while Appellant asserts that “[n]anoribbons and nanowires
are distinguished in the specification in natural ways consistent with their
ordinary definition” (Appeal Br. 23), Appellant does not cite any particular
portion of the Specification in support of that assertion, nor does Appellant
cite to any evidence of record that provides an ordinary definition of
nanoribbons or nanowires. Accordingly, because Appellant’s contentions as
to claim 12 are entirely unsupported attorney argument, we find them
unpersuasive. We therefore affirm the Examiner’s rejection of claim 12
over Allemand.
OBVIOUSNESS—ALLEMAND AND OLDENBURG
Appellant’s claim 3 recites “[t]he transparent conductive film of claim
1 wherein the nanoscale colorants comprise a metal nanoshell with a ceramic
core having an average diameter of the primary particles of no more than
about 100 nm.” Appeal Br. 37.
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The Examiner determined that, although the conductive films of
Allemand do not use metal-shelled nanoscale colorants with ceramic cores
as recited in Appellant’s claim 3, a skilled artisan would have considered it
obvious “to have selected a silica core (i.e., ceramic core) / gold shell
nanostructure for the gold nanoparticle of Allemand, in order to improve the
stability of the nanoparticles (Oldenburg: para. [0067]).” Ans. 7.
Appellant contends that a skilled artisan lacked motivation and a
reasonable expectation of success in substituting Oldenburg’s coated
particles for Allemand’s nanowires because Oldenburg “does not teach use
of the nanoshell for electrical conductivity since they generally would not be
readily processible into conductive elements due to their dielectric core and
their shape.” Appeal Br. 24; see also Reply Br. 7.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant does not persuade us
the Examiner erred in maintaining the rejection of claim 3.
Contrary to Appellant’s contention, Oldenburg expressly teaches that
the outer shell of its particles are conductive:
The compositions of the present invention are particles
that have at least two layers. At least one layer is immediately
adjacent to and surrounds another layer. The innermost layer is
said to be a core. A layer that surrounds the core is said to be a
shell layer. The shell layer is metal-like in that it can conduct
electricity and is made of a metal or metal-like material.
Oldenburg ¶ 20 (emphasis added); see also id. ¶ 25 (disclosing gold and
silver as preferred shell metals).
Oldenburg also teaches that its particles have the size dimensions
taught as being suitable for the nanoparticles in Allemand’s conductive
films. See Oldenburg ¶ 26 (“The conducting shell layers of the present
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invention have thicknesses that range from approximately 1 to 100 nm.”);
see also id. ¶ 24 (disclosing that the silica cores of the particles may be as
small as 10 nm).
As the Examiner found, moreover, Oldenburg teaches that its particles
are advantageous in that they can be stably dispersed. See Oldenburg ¶ 67
(“The inventors made the surprising discovery that the gold decorated
particles did not aggregate after being centrifuged and redispersed in the
absence of additional stabilizing compounds. This discovery allowed the
convenient separation of the decorated silica from colloidal gold . . . .”).
Thus, to summarize, Oldenburg teaches that its metal-coated particles
are composed of the conductive materials (silver and gold) and have the
dimensions (100 nm or less) taught by Allemand as being desirable for the
nanoparticles used in its conductive films. And, Oldenburg teaches that its
particles are advantageous in that they can be stably dispersed. Given these
teachings, Appellant does not persuade us that the Examiner erred in finding
that a skilled artisan would have had sufficient motivation, and a reasonable
expectation of success, in incorporating Oldenburg’s particles in Allemand’s
conductive films.
Moreover, because Oldenburg’s metal-coated particles are composed
of conductive materials (silver and gold) and have the dimensions (100 nm
or less) described in Appellant’s Specification as providing the reduction in
b* recited in Appellant’s claim 1 (from which claim 3 depends), Appellant
does not persuade us that the Examiner erred in determining that the
combination of Allemand and Oldenburg would have provided a conductive
film having all of the features recited in claim 3. We therefore affirm the
Examiner’s rejection of claim 3 over Allemand and Oldenburg.
Appeal 2020-001150
Application 14/627,400

19
OBVIOUSNESS—ALLEMAND AND KYDD
In rejecting claims 2, 5, 18–22, and 24–26 over Allemand and Kydd,
the Examiner determined that it would have been obvious to use Kydd’s
“silver nanoscale flakes (i.e. silver nanoplates) (Kydd: col. 7, lines 12-15 and
lines 33-44)” in Allemand’s conductive films. Ans. 8.
As to the reduction of b*, required by all of the rejected claims, the
Examiner found that the “silver nanoplates of Allemand and Kydd are
substantially identical in structure and composition to those found in the
present specification, and therefore the claimed peak absorption is expected
of the nanoplates of Allemand and Kydd.” Ans. 8; see also id. at 10, 11–12.
Appellant argues, among other things, that the Examiner erred in
finding that Kydd’s nanoscale flakes have size dimensions that would
provide the reduction of b*, required by all of the rejected claims. See
Appeal Br. 27.
Having carefully considered all of the arguments and evidence
advanced by Appellant and the Examiner, Appellant persuades us that the
evidence of record does not support the Examiner’s rejection based on
Allemand and Kydd.
Kydd describes compositions “comprised of a metal mixture and a
Reactive Organic Medium (ROM). These compositions can be applied to
thermally stable substrates and cured to well consolidated circuit traces and
objects by heat treatment.” Kydd 6:64–67.
Kydd explains that, in preferred embodiments, “the metal mixture
contains metal flake and colloidal or semi-colloidal metal powder where the
total of flake plus powder is preferred to be 60–85% of the total mixture, and
the powder is preferred to be 30–50% of the total metal.” Kydd 7:17–22.
Appeal 2020-001150
Application 14/627,400

20
As the Examiner found, Kydd discloses that suitable metals include silver
and gold. Id. at 7:12–15.
The Examiner expressly relies on the “silver nanoscale flakes”
described in Kydd as providing not only the reduction in b* recited in all of
the claims subject to this rejection, but also the additionally claimed features,
such as the fused metal nanostructured network recited in Appellant’s claim
5. See Ans. 8 (citing Kydd 7:12–15 and Kydd 7:33–44); see also Appeal Br.
37 (Appellant’s claim 5 reciting that the film of claim 1 includes a fused
metal nanostructured network).
As the Examiner found, Kydd discloses that its flakes form a network
when applied to a substrate. See Kydd 7:33–44.
As Appellant contends, however, Kydd discloses that its metal flakes
are much larger than the 100 nm size cutoff described in Appellant’s
Specification as providing the b* reduction recited in all of the claims
subject to this rejection. See Kydd 7:23–25 (“The metal flakes have a major
dimension between 2 to 10 micrometers, preferably about 5 micrometers,
and a thickness of less than 1 micrometer.”). Accordingly, Appellant
persuades us that the Examiner has not explained sufficiently why Kydd’s
metal flakes, when employed in Allemand’s films, would have provided the
b* reduction recited in all of the claims subject to this rejection.
The Examiner argues:
[T]he materials of Kydd are nanoplates, in that they have a
dimension of below 100 nm. The definition in the present
specification distinguishes between whether one, two, or all
dimensions of the nanostructures are below 100 nm in order to
be considered a particular shape. The nanoplates of the present
specification have one dimension of less than 100 nm, and
therefore they are nanoplates.
Appeal 2020-001150
Application 14/627,400

21
Ans. 19–20.
We are not persuaded.
As noted above, and as Appellant argues, the metal flakes cited by the
Examiner as corresponding to the nanoplates of Appellant’s claims are much
larger than the 100 nm size cutoff described in Appellant’s Specification as
providing the b* reduction recited in all of the claims subject to this
rejection. See Kydd 7:23–25.
We acknowledge Kydd’s disclosure that the colloidal metal powder,
present in Kydd’s metal mixture alongside the metal flakes, has particle
sizes of less than 100 nm. See Kydd 7:45–48 (“The other metallic powder
mixture constituent of the and present invention are preferably colloidal or
semi-colloidal powders with individual particle diameters below about 100
nanometers, preferably less than about 50 nanometers.”) (emphasis added).
As noted above, however, the Examiner’s rejection relies on Kydd’s
metal flakes as corresponding to the nanoplates of the rejected claims, and
Kydd’s metal flakes are much larger than the 100 nm size cutoff described in
Appellant’s Specification as providing the b* reduction recited in all of the
claims subject to this rejection. Moreover, the fact that Kydd’s metal
mixture includes particles within the size range disclosed in Appellant’s
Specification as providing the b* reduction does not persuade us that Kydd’s
mixture would provide the b* reduction, because the mixture includes a
substantial amount of nanoplates significantly larger than the 100 nm size
cutoff described in Appellant’s Specification as providing the b* reduction.
In sum, for the reasons discussed, Appellant persuades us that the
evidence of record does not support the Examiner’s rejection based on
Appeal 2020-001150
Application 14/627,400

22
Allemand and Kydd. We therefore reverse the Examiner’s rejection of
claims 2, 5, 18–22, and 24–26 over Allemand and Kydd.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 6–10,
12–17
103 Allemand 1, 4, 6–10,
12–17

3 103 Allemand,
Oldenburg
3
2, 5, 18–
22, 24–26
103 Allemand, Kydd 2, 5, 18–22,
24–26
Overall
Outcome
1, 3, 4, 6–
10, 12–17
2, 5, 18–22,
24–26

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART