Ex Parte Gillies et al

Patent Trial and Appeal Board

Feb 6, 2015

11175196 (P.T.A.B. Feb. 6, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JENNIFER GILLIES
and MARGARET HINES
__________

Appeal 2012-009401
Application 11/175,196
Technology Center 2800
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1–4, 6, 7, 10–13, and 22–24 under 35 U.S.C. § 112, first paragraph, based
on the written description requirement.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Claims 8, 9, and 14–21 are also pending but have been withdrawn from
consideration.
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Application 11/175,196

2

Claims 1 and 13 are the independent claims on appeal. They are reproduced
below from the Claims Appendix of the Appeal Brief dated January 30, 2012
(“App. Br.”). The limitation at issue is italicized.
1. A micronized semiconductor nanocrystal complex made by a
process comprising:
dispersing a plurality of semiconductor nanocrystals colloidally
in a solid first matrix material; and
micronizing the first matrix material after the dispersing step,
such that at least one particle of the micronized semiconductor
nanocrystal complex comprises between about 10,000 and about 333
billion semiconductor nanocrystals.
App. Br. 11 (emphasis added).
13. A micronized semiconductor nanocrystal complex made by a
process comprising:
dispersing a plurality of first semiconductor nanocrystals
colloidally in a solid first matrix material;
dispersing a plurality of second, semiconductor nanocrystals
colloidally in a solid second matrix material, wherein the first and
second semiconductor nanocrystals are chosen from at least one of: a
different size and a different material; and
micronizing the first and the second matrix materials after the
dispersing steps, such that at least one particle of the micronized
semiconductor nanocrystal complex comprises between about 10,000
and about 333 billion semiconductor nanocrystals.
App. Br. 12 (emphasis added).
The § 112 rejection is sustained for the reasons stated in the Examiner’s
Answer dated March 29, 2012 (“Ans.”). We add the following for emphasis.
B. DISCUSSION
Claims 1 and 13 recite a micronized semiconductor nanocrystal complex
made by, inter alia, micronizing a matrix material “such that at least one particle of
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the micronized semiconductor nanocrystal complex comprises between about
10,000 and about 333 billion semiconductor nanocrystals.” App. Br. 11, 12. The
Examiner finds that “[t]he language of ‘between about 10,000 and about 333
billion’ . . . is not supported by the originally filed disclosure.” Ans. 5.
There is no dispute on this record that the claim limitation at issue is not
expressly described in the originally filed disclosure. See App. Br. 5 (“no ranges
of the number of nanocrystals within a micronized particle are disclosed in the
specification”). Nonetheless, the Appellants contend that the claim limitation at
issue is “implicitly and/or inherently” supported by the original disclosure. For
support, the Appellants rely on “Para. 32 [of the Specification] and the given
Examples at Para. 57–62 [of the Specification], as related to the Declarations filed
2/9/10[2] and 6/29/2011.[3]” App. Br. 5.
“The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that time of
the later claimed subject matter.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
1983). Compliance with the written description requirement is a question of fact.
Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1574 (Fed. Cir. 1985).
The Landry and Ballinger Declarations focus on Example 1 in the
Appellants’ Specification (Spec. ¶¶ 57, 58) and calculate the number of

2 The Appellants appear to be referring to the Declaration of Mr. Daniel Landry
dated February 8, 2010 (hereinafter “Landry Declaration”). The Appellants have
included a copy of the Landry Declaration in the Evidence Appendix of the Appeal
Brief.
3 Declaration of Dr. Clinton Ballinger dated June 29, 2011 (hereinafter “Ballinger
Declaration”). The Appellants have included a copy of the Ballinger Declaration
in the Evidence Appendix of the Appeal Brief.
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nanocrystals in a micronized particle based on a number of values, including the
molecular weight of a PbS nanocrystal, the density of polystyrene, the size of the
micronized particle,4 and the size of the nanocrystal.5 Example 1 discloses “a
process for preparing a micronized semiconductor nanocrystal complex comprising
a plurality of PbS semiconductor nanocrystals in a first matrix material that is
polystyrene, wherein the polystyrene is micronized.” Spec. ¶ 57.
Example 1 does not disclose the molecular weight of the PbS nanocrystals.
Example 1 merely identifies the PbS nanocrystals as “purchased in toluene
(Evident Technologies, Troy, New York).” Spec. ¶ 58. Nonetheless, the
Appellants argue that, “as described in the Declaration, the molecular weights
given to derive the base weight [i.e., the molecular weight of the PbS nanocrystals]
are based on calculations of the maximum and minimum sizes of particles given in
the specification.”6,7 App. Br. 6 (emphasis added).
Turning to the Declarations, Mr. Landry states that the molecular weight for
“larger sized nanocrystals” is 600,000 g/mol and the molecular weight for “smaller

4 Example 1 does not specify the size(s) of the micronized particles. See Spec.
¶ 58 (the solid is “micronized to the desired size to form a micronized
semiconductor nanocrystal complex”). However, the Appellants disclose that
“[t]he particles may be micronized from anywhere between 0.5 microns to 100
microns.” Spec. ¶ 32.
5 The Landry and Ballinger Declarations appear to have been filed in response to a
§ 103(a) rejection of claims 1, 2, 4, 11–13, 22, and 23 based on Morioka. See
Landry Decl. ¶¶ 4–6; Ballinger Decl. ¶¶ 4–6. That rejection is not before us on
appeal.
6 The Appellants do not cite to a specific Declaration. For purposes of this appeal,
we will assume the Appellants are referring to paragraph 7 of the Landry
Declaration and paragraph 8 of the Ballinger Declaration.
7 In the Background of the Invention, the Appellants disclose that “[s]emiconductor
nanocrystals are typically tiny crystals of II-VI, III-V, IV-VI materials that have a
diameter between 1 nanometer (nm) and 20nm.” Spec. ¶ 3.
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nanocrystals” is 20,000 g/mol. Landry Decl. ¶ 7. Dr. Ballinger, on the other hand,
states that “[t]he range of possible base molecular weights was from 20,000g/mol
to 1,500,000g/mol. These values were the minimum and maximum sizes of the
tested nanocrystals, respectively.” Ballinger Decl. ¶ 8 (emphasis added).
However, neither Mr. Landry nor Dr. Ballinger correlates the size(s) of the PbS
nanocrystals used to calculate the molecular weight with the sizes of nanocrystals
disclosed in the Specification.
As for the density of the polystyrene, Dr. Ballinger states:
Since Polystyrene is a long chain carbon molecule that can vary
greatly in length, it is necessary to know the average number of
carbons per chain, denoted by Mn, and the average molecular weight
per chain, denoted by Mw. The Polystyrene used for this experiment
was from Sigma-Aldrich: Product Number: 441147 and Batch
Number: 06906TC. The Mw and Mn values from this batch were
350,000 and 170,000 respectively.
Ballinger Decl. ¶ 9 (emphasis added); see also App. Br. 7 (“the Polystyrene
(Instant Application, Para. 58) used was from Sigma-Aldrich: Product Number
441147 and Batch Number: 06906TC”). However, Example 1 does not identify
the polystyrene used. See Spec. ¶ 58.
Relying on the calculations in the Landry and Ballinger Declarations, the
Appellants contend that the evidence of record shows that the lowest number of
nanocrystals per micronized particle is “8.8884E4 (88,884) nanocrystals.” App.
Br. 8; compare App. Br. 11, 12 (claims 1 and 13 recite a lower limit of “about
10,000” semiconductor nanocrystals). The Appellants argue:
[T]he larger the nanocrystal, the fewer nanocrystals there would be
within the micronized particle of the claim. . . . For instance, if a
micronized particle of 0.5 microns (Instant Application, Para. 32) was
used, which is smaller than the example calculations for a 2 micron
particle, and an even larger nanocrystal were used, e.g., molecular
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weight greater than 600,000g/mol up to the specified 1,500,000g/mol
(Declaration, Point 8)[8], the specified 88,000 nanocrystals
(Declaration, Point 9, Paragraph after Equation 7)[9] would support the
claimed 10,000 nanocrystals within a micronized particle.
App. Br. 8–9 (emphasis added).
Suffice it to say that a particle comprising 88,000 nanocrystals does not
contain the same number of nanocrystals as a particle comprising as few as about
10,000 nanocrystals. See Ans. 15 (“[t]he number of 10,000 is different from
88,000”).
As for the upper limit recited in claims 1 and 13, i.e., “about 333 billion
semiconductor nanocrystals,” Dr. Ballinger states:
The smallest nanocrystal tested had a molecular weight of
20,000g/mol, while the largest volume was 100 microns in diameter.
By using these two variables, the upper limit will yield 3.3332E11
nanocrystals. According to the experiment this would be the upper
limit. However, if there were to be error somewhere along the way,
and the nanocrystals did not begin to grow with respect to
temperature, the smallest crystal size would be that of the unit cell,
which is cubic. By using the maximum volume and the molecular
weight of the unit cell, the maximum amount of crystals that could
exist in a particle would be 2.5239E12 nanocrystals.
Ballinger Decl. ¶ 9 (emphasis added).
This uncertainty in calculating the maximum number of nanocrystals is
further evidence that the originally filed disclosure does not reasonably convey that
the Appellants had possession of the claimed range at the time the instant
Application was filed.

8 We understand the Appellants to be referring to paragraph 8 of the Ballinger
Declaration.
9 We understand the Appellants to be referring to paragraph 9 of the Ballinger
Declaration.
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For the reasons set forth above and in the Examiner’s Answer, the
Examiner’s finding that the originally filed disclosure does not provide written
description support for the claim limitation “between about 10,000 and about 333
billion semiconductor nanocrystals” is supported by a preponderance of the
evidence.
C. DECISION
The decision of the Examiner 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)(1).
AFFIRMED

cdc