Ex parte CHAGNON et al.

Board of Patent Appeals and Interferences

Jan 29, 1998

07894260 (B.P.A.I. Jan. 29, 1998)

Application for patent filed June 8, 1992. According1
to appellants, the application is a continuation-in-part of
Application 07/566,169, filed August 10, 1990, now abandoned,
which is a continuation-in-part of Application 07/455,071,
filed December 22, 1989, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MARK S. CHAGNON, JOHN R. FERRIS,
MICHELLE J. CARTER, TRACY J. HAMILTON and MARIA A. GRAY
________________
Appeal No. 97-2359
Application 07/894,2601
________________
ON BRIEF
________________
Before KIMLIN, WEIFFENBACH, OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-2359
Application 07/894,260
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This is an appeal from the examiner’s final rejection of
claims 70-78 and refusal to allow claims 62-68 as amended
after final rejection. The remaining claims in the
application, which are claims 43-61, 69, and 79-119, stand
free of rejection. Claims 62 and 66 are illustrative and read
as follows:
62. A controllably dissociable aggregate cluster
comprising a cluster of inorganic oxides of substantially
mono-dispersed particle size which are coated with a
functionalized organic moiety wherein the cluster is bonded
together by chemical interaction between the functional groups
of said organic moiety.
66. A controllably dissociable aggregate bead cluster
which comprises:
a cluster of inorganic oxide particles of substantially
mono-dispersed particle size associated with a macromolecular
species, characterized in that said particles are encapsulated
by the macromolecular species forming a bead, the
macromolecular species containing an organic functionality to
link the beads together forming controllably dissociable
chemical bonds.
THE REFERENCES
Yen et al. (Yen) 4,157,323 Jun. 5, 1979
Czerlinski 4,454,234 Jun. 12, 1984
Whitehead et al. (Whitehead) 4,554,088 Nov. 19, 1985
Lee ‘904 4,632,904 Dec. 30, 1986
Lee ‘492 WO 87/06492 Nov. 5, 1987
(Patent Cooperation Treaty application)
THE REJECTIONS
Appeal No. 97-2359
Application 07/894,260
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Claims 62-64 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings of Whitehead,
Lee ‘904 and Lee ‘492. Claims 66-68 stand rejected under 35
U.S.C. § 103
as being unpatentable over Yen and Czerlinski. Claims 62-65
and 70-78 stand provisionally rejected under the judicially
created doctrine of obviousness-type double patenting over
claims 1-31 of application 07/911,962 (‘962 application).
Claims 62-65 stand rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1-12
of U.S. patent no. 5,225,282 to Chagnon et al. (Chagnon).
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with the
examiner that the invention recited in appellants’ claims 62-
64 and 66-68 would have been obvious to one of ordinary skill
in the art at the time of appellants’ invention over the
applied references. Accordingly, the aforementioned
rejections under 35 U.S.C. § 103 will be affirmed. However,
Appeal No. 97-2359
Application 07/894,260
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we agree with appellants that the rejections under the
judicially created doctrine of obviousness-type double
patenting are not well founded. These rejections therefore
will be reversed.
At the outset, we note that appellants do not include in
their brief a statement that the claims do not stand or fall
together. Thus, the claims within each rejection stand or
fall together and we limit our discussion to one claim to
which each rejection applies, i.e., claims 62 and 66. See 37
CFR § 1.192(c)(7)(1995).
Rejection over Whitehead, Lee ‘904 and Lee ‘492
Whitehead discloses a cluster of inorganic oxide
particles coated with a functionalized organic moiety (col. 7,
lines 17-18; col. 8, lines 65-67). Appellants argue that
Whitehead does not teach or suggest a method for preparing an
inorganic oxide particle having a uniform size distribution
(second amended brief, page 7).
Appellants’ claim 62 does not recite “uniform size
Appeal No. 97-2359
Application 07/894,260
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distribution”. What is recited is “substantially mono-
dispersed particle size”. In view of appellants’
specification, it appears that “substantially mono-dispersed
particle size” has the same meaning as “substantially uniform
particle size distribution” and “substantially uniform size”
(page 1, line 19; page 7, lines 1, 19-20 and 24). Appellants,
however, do not state what is meant by “substantially” in any
of these terms.
Whitehead teaches that if the ratio of divalent to
trivalent iron salts used to form the oxide particles is too
low, the particle size becomes more heterogeneous, but the
particles nevertheless can be silanized (col. 11, lines 44-
51). This teaching indicates that uniformity of particle size
is a result-effective variable and that particles having a
uniform particle size are desirable. Thus, in view of this
teaching, it would have been prima facie obvious to one of
ordinary skill in the art to use conventional techniques to
obtain a substantially uniform particle size, with the optimum
particle size distribution being determined through no more
than routine experimentation. See In re Boesch, 617 F.2d 272,
Appeal No. 97-2359
Application 07/894,260
A discussion of Lee ‘904 and Lee ‘492 is not necessary2
to our decision.
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276, 205 USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d 454,
456, 105 USPQ 233, 235 (CCPA 1955).
Appellants argue that the examiner has not pointed to the
use of grinding alone to obtain a substantially mono-dispersed
particle size (brief, page 14). We are not convinced by this
argument because at the time of appellants’ invention,
conventional particle formation techniques were capable of
producing particles which can be considered to have a
“substantially mono-dispersed particle size”. Czerlinski, for
example, teaches that grinding, chemical precipitation, and
fractionation were known methods in the art for obtaining
uniform particle sizes (col. 3, line 57 - col. 4, line 60).
For the above reasons, we conclude, based on the
preponderance of the evidence and argument in the record, that
the invention recited in appellants’ claims 62-64 would have
been obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103.2
Appeal No. 97-2359
Application 07/894,260
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Rejection over Yen and Czerlinski
Yen discloses a cluster of particles comprised of uniform
diameter metal or metal compound particles having a size
typically below 1,000 D uniformly dispersed in a
functionalized polymer, and teaches that agglomeration is
controllable by changes in the pH of a suspension of the
metal-containing or metal compound-containing polymer
particles (col. 2, lines 37-40, 43-44 and 52-56; col. 6, lines
22-25 and 39-41). The functional groups of the polymer can be
hydroxyl, carboxyl and amino (col. 3, lines 19-20 and 67),
which are functional groups which appellants’ particles can
contain (specification, pages 29-31). Czerlinski teaches that
conventional methods were known in the art for making
particles having a uniform size (col. 3, line 57 - col. 4,
line 60).
Appellants argue that Yen does not disclose inorganic
oxide particles having a uniform size distribution (brief,
pages 8-9 and 17-19). We do not find this argument to be
convincing because Yen specifically teaches that uniform
diameter metal or metal compound particles, which can be metal
Appeal No. 97-2359
Application 07/894,260
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oxide particles, are used (col. 6, lines 22-32).
For the above reasons, the evidence and argument of
record, on balance, leads us to conclude that the invention
recited in appellants’ claims 66-68 would have been obvious to
one of ordinary skill in the art within the meaning of 35
U.S.C. § 103.
Obviousness type double patenting rejections
The examiner argues that appellants have not established
that the method of making the particles or the particle size
influences the function of the particles (answer, pages 4 and
16). This argument is not well taken because the examiner has
the initial burden of establishing a prima facie case of
obviousness. See In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The examiner has not met
this
burden by stating that appellants have not established that a
Appeal No. 97-2359
Application 07/894,260
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claim limitation influences the function of the claimed
particles.
Neither the ‘962 application nor Chagnon discloses
forming particles by use of a porous membrane as disclosed in
the present application, and neither teaches that the
particles produced have a substantially mono-dispersed
particle size. Since the examiner has not explained why a
cluster of inorganic oxide particles of substantially mono-
dispersed particle size would have been obvious to one of
ordinary skill in the art in view of the claims of the ‘962
application or Chagnon, the obviousness-type double patenting
rejections are reversed.
DECISION
The rejections under 35 U.S.C. § 103 of claims 62-64 over
Whitehead, Lee ‘904 and Lee ‘492, and of claims 66-68 over Yen
and Czerlinski, are affirmed. The provisional rejection of
claims 62-65 and 70-78 under the judicially created doctrine
of obviousness-type double patenting over claims 1-31 of the
‘962 application, and the rejection of claims 62-65 under the
judicially created doctrine of obviousness-type double
patenting over claims 1-12 of Chagnon, are reversed.
Appeal No. 97-2359
Application 07/894,260
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 97-2359
Application 07/894,260
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Steven J. Grossman
Hayes, Soloway, Hennessey & Hage
175 Canal Street
Manchester, NH 03101