Ex Parte Hennig et al

Patent Trial and Appeal Board

Nov 3, 2016

11917922 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111917,922 11/17/2009
28524 7590 11/07/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Guido Hennig
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2005P56036WOUS 1237
EXAMINER
FORMAN, BETTY J
ART UNIT PAPER NUMBER
1634
NOTIFICATION DATE DELIVERY MODE
11/07/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUIDO HENNIG and KARLHEINZ HILDENBRAND 1
Appeal 2015-003018
Application 11/917 ,922
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to silica-coated magnetic particles and a method for their
production. Claims 1--4, 11-17, and 19 are on appeal as rejected under
35 U.S.C. § 103(a) and on the ground ofnonstatutory obviousness-type
double patenting. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We understand the Real Party in Interest is Siemens Healthcare
Diagnostics GMBH. Supp. App. Br. 2.
2 "Appellants acknowledge[] that claims 1-4, 11-17 and 19 are on appeal."
Reply Br. 2; see also Supp. App. Br. 2 and Ans. 9 (discussing appealed and
withdrawn claims).
Appeal2015-003018
Application 11/917,922
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is representative, and reads as follows:
1. Silica-coated magnetic particles, characterized in that they
have a uniformly thick distribution of a homogenous single to
multiple molecular closed and tight silica layer with a layer
thickness of 0.2 nm to 5 nm and having grain size distribution
between 0.1 µm and 1 µm, wherein the closed and tight silica
layer prevents the release of iron compounds and iron ions to the
environment.
Supp. App. Br. 17 (Claims App'x).
The following rejections are on appeal:
Claims 1--4, 11-14, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) over Tan3 and Philipse4 and/or Ishii. 5 Final Action 2.
Claims 1--4, 11-17, and 19 stand rejected under 35 U.S.C. § 103(a)
over Tan and Philipse and/or Ishii and Nishiya. 6 Final Action 6-7.
Claims 1--4, 11-17, and 19 stand rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1-21 of
Sherman.7 Final Action 10.
3 U.S. Patent No. 7,524,630 (issued to Tan et al. on Apr. 28, 2009)
(hereinafter "Tan").
4 Albert P. Philipse et al., Magnetic Silica Dispersions: Preparation and
Stability of Surface-Modified Silica Particles with a Magnetic Core, 10
LANGMUIR 92-99 (1994) (hereinafter "Philipse").
5 European Patent Application Pub. No. EP 0 988 853 Al (published Mar.
29, 2000) (hereinafter "Ishii").
6 U.S. Patent Application Pub. No. US 2004/0126902 Al (published July 1,
2004) (hereinafter "Nishiya").
7 U.S. Patent No. US 8,323,899 B2 (issued to Sherman et al. on Dec. 4,
2012) (hereinafter "Sherman").
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Application 11/917,922
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. Any findings of fact set forth below are provided only to highlight
certain evidence.
FINDINGS OF FACT
FFI. Tan's disclosure is directed to "[s]ilica-coated
nanoparticles," and the reference disclosed "[t]he nanoparticle used can
have a core enveloped by the silica surface [where] [ t ]he core can be a
metal (e.g., a magnetic metal)." Tan Abstract, 1:56-57; see also Final
Action 2-8 (discussing Tan).
FF2. Tan disclosed, "[s]olid forms [without pores] can be
prepared ... by uniformly coating core 12 with shell 14." Tan 4:35-
36; see also Final Action 2-8 (discussing Tan).
FF3. Tan disclosed, "in a preferred embodiment ... core 12
is made up of a magnetic metal such as magnetite (Fe30 4)." Tan 4:55-
57; see also Final Action 2-8 (discussing Tan).
FF4. Tan disclosed, "[c]ore 12 can be of any size less than
the size of nanoparticle 10. Thus, core 12 can have a diameter of
between less than 1and1000 nm." Tan 5:21-23; see also Final Action
2-8 (discussing Tan).
FF5. Tan further disclosed,
[f]or many applications, core 12 preferably has a diameter
ranging from about 1 to about 200 nm. As one example, because
animals are able to excrete nanoparticles sized less than about
100 nm, but retain particles greater than 100 nm (primarily in the
liver and spleen), cores small enough to be incorporated in
nanoparticles less than 100 nm in size are preferred in diagnostic
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Application 11/917,922
or therapeutic applications where is it desired that the
nanoparticles not be retained in a subject.
Tan 5:23-30; see also Final Action 2-8 (discussing Tan). Thus, Tan
disclosed that nanoparticles can be optimized in size depending on whether
the skilled artisan preferred them to be retained in a subject's system (e.g., in
the liver or spleen) or excreted from the subject's system, with the threshold
being about 100 nm.
FF6. Tan disclosed its
shell 14 can be made to have a thickness ranging from less than
about 1 nm to greater than about 300 nm. Depending on the
particular application that nanoparticle 10 is to be used in, the
preferred thicknesses of shell 14 will vary. For example, a
relatively thick shell is generally preferred where it is desired to
reduce agglomeration of nanoparticles (where the cores attract
one another) or degradation of the shell (e.g., in a caustic
solvent). On the other hand, where it is desired to amplify the
properties of the core (e.g., color of a pigment), a relatively
thinner shell is generally preferred.
Tan 6: 10-21; see also Final Action 2-8 (discussing Tan).
FF7. Tan disclosed "in FIG. 1, shell 14 is shown completely
enveloping core 12 and thus sequestering core 12 from the outside
environment. This form is preferred where it is desired to prevent
interaction of core 12 with external factors. For example, a silica
coating can prevent corrosion of an iron-based core." Tan 5:63---6: 1;
see also Final Action 2-8 (discussing Tan).
FF8. Philipse disclosed, "magnetite particles embedded in
surface-modified silica" and a silica shell thickness "estimated ... to
be ~0.5nm." Philipse 92 (right col.), 96 (left col. 4.2); see also Final
Action 4 (discussing Philipse ).
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Application 11/917,922
FF9. Ishii disclosed "a silica-coated metal oxide powder
which has a silica coating thickness of 0 .1 to 100 nm" and "a silica
coating thickness of 0.5 to 25 nm." Ishii Abstract, i-fi-f 11-12; see also
Final Action 4 (discussing Ishii).
FF 10. Ishii further disclosed, "this silica coating is a dense
and practically useful silica film" and "the term 'dense' as used means
that the silica coating formed has a high density and is uniform and free
of pin holes or cracks." Ishii i156; see also Final Action 4 (discussing
Ishii).
FF 11. Nishi ya disclosed
Forming a silica coating near the surface of each ferromagnetic
iron oxide particle is not particularly novel. However, when a
silica coating is applied with the aim of improving the
dispersibility for toner use and the like, forming of a uniform
coating to cover the surface of each particle is important and the
amount of silica to be coated is not important. When improved
dispersibility is desired, the amount of silica to be coated on the
ferromagnetic iron oxide particle is generally several wt % at
most. When improved dispersibility is desired, coating of, for
example, not less than 2 wt % of silica does not result in further
improvement in the dispersibility. Rather, the amount of
redundant silica without magnetism increases, thereby
decreasing saturation magnetization and blackness.
Nishiya i193; see also Final Action 7-8 and Ans. 7 (discussing Nishiya).
Therefore, Nishiya teaches that the % silica content of a magnetic particle
coating is an optimizable variable to be considered when particle
dispersibility is an objective.
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DISCUSSION
I. Obviousness
We discuss both obviousness rejections together because Appellants
presented an unified argument thereover and, also, because the first such
rejection is cumulative of the second. Appellants do not persuade us that the
Examiner failed to establish a prima facie case that the claims would have
been obvious over the cited prior art combinations. We address Appellants'
arguments below.
Appellants' argument is that the claims are limited to "a grain
(particle) size distribution from 0.1 microns to 1.0 microns (equating to 100
nm to 1000 nm)," that this language must be construed to exclude any
particle sizes below 100 nm, and that Tan fails to disclose such particles.
Supp. App. Br. 6; Reply Br. 10. Appellants contend the claim term
"distribution" in this language, as well as descriptions in the Specification,
so limit the claims. This argument is not persuasive for several reasons.
As identified by the Examiner, the claims are fashioned as "open-
ended" claims by virtue of the transitional language "characterized in that,"
used to define the silica-coated magnetic particles of the invention. Ans. 11.
"The transitional term 'comprising', which is synonymous with 'including,'
'containing,' or 'characterized by,' is inclusive or open-ended and does not
exclude additional, unrecited elements or method steps." MPEP § 2111.03.
Thus, the claims require, but are not limited to, the particles and layer(s)
thereover of the specific dimensions recited; they do not exclude other-sized
particles and/or layer(s). Appellants' argument that such open-endedness
includes only unrecited elements is not persuasive because anything not
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expressly recited by the claims, e.g., smaller particles, are unrecited
elements.
Further, as argued by Appellants, the Specification does discuss the
undesirability of some particle sizes, but not to the extent argued by
Appellants. See Supp. App. Br. 7. Contrary to Appellants' contention that
particles sizes below 100 nm are excluded from the invention, the
Specification indicates that "particles in the nanometer range" are unwanted.
Spec. 5 (first two paragraphs). Thus, for the sake of argument, if any
specific sized particles are disclaimed in the Specification it is only ~ 1 nm
sized particles and this tiniest of potential undesirable overlaps with the
ranges disclosed in the prior art cannot defeat obviousness. Appellants'
contentions to the contrary are mere attorney argument, unsupported by fact
evidence. It is well settled that arguments of counsel cannot take the place
of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
135, 139--40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
Moreover, Tan did, in fact, disclose reasoning to limit nanoparticles to
a range larger than 100 nm. See FF5. According to Tan, in silica-coated,
magnetic particles, size is an optimizable variable, which depends upon
whether the skilled artisan desires the particles to be retained by or excreted
from a system. Id. Particles of 100 nm and larger would be selected if they
are to be so retained, while smaller particles are selected if they are to be
excreted. "' [I]t is not inventive to discover the optimum or workable ranges
by routine experimentation.' In re Aller, 220 F.2d 454, 456 (CCP A 1955).
Only if the 'results of optimizing a variable' are 'unexpectedly good' can a
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Application 11/917,922
patent be obtained for the claimed critical range. In re Antonie, 559 F.2d
618, 620 (CCPA 1977)." In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997). Here, Appellants have not persuasively shown unexpectedly good
results relating to the recited particle size range and the prior art provides
reason to select the dimensions recited by the claims.
Appellants also argue Tan does not disclose "a uniformly thick
distribution of a homogenous single to multiple molecular closed and tight
silica layer." Supp. App. Br. 9. Again, this is not persuasive.
Tan disclosed a layer of silica over a magnetic particle that can have a
thickness tailored to its use by being either thinner or thicker, and that this
silica layer is enveloping of the core so that the core is fully sequestered
from the outside environment. See FF6, FF7; see also FFlO (while not
relied on in rejecting the claims, Ishii also disclosed a dense and uniform
silica layer, free of holes or cracks, which further bolsters the similar
disclosure of Tan). This teaches the closed and tight silica layer of the
claims. See, e.g., Spec. 7-8 (discussing objectives of the invention and its
dense, closed and tight silicate layer).
Appellants argue that the specific dimensions of the silica layer as
recited, e.g., by claims 2 and 3 ("a maximum layer thickness 0.5nm (claim
3) or a maximum layer thickness of 2nm (claim 2)"), are not disclosed by
Tan. Supp. App. Br. 10-12. Again, this is not persuasive.
As the Examiner identifies, Tan disclosed that the silica layer
thickness is an optimizable variable and also that it can be less than 1 nm in
thickness. The Examiner cites Philipse and Ishii to illustrate that silica layer
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thicknesses of 0.5 nm to 25 nm were known in the art and, hence, obvious in
view of Tan. See FF8 and FF9.
Finally, Appellants argue "Nishiya does not cure the []identified
deficiencies of the combination of [other] references." Supp. App. Br. 12.
This is also not persuasive.
The Examiner cites Nishiya for its teaching of improved dispersion
properties of silica coated particles and that atom % may be reasonably
modified by the skilled artisan to derive optimal coatings. See FF 11; see
also Final Action 7-8 (discussing Nishiya). Appellants do not present
persuasive arguments to the contrary.
For the above reasons, we find that the preponderance of evidence
supports the Examiner's determination of obviousness. We, therefore,
affirm the rejections.
II. Double Patenting
Appellants present no arguments over the Examiner's double
patenting rejections and concede to file a terminal disclaimer, if necessary
(Reply Br. 9), we summarily sustain the rejection. See MPEP § 1205.02, 9th
ed., Rev. 7, Nov. 2015 ("If a ground of rejection stated by the examiner is
not addressed in the appellant's brief, appellant has waived any challenge to
that ground or rejection and the Board may summarily sustain it.").
SUMMARY
The rejection of claims 1--4, 11-14, and 16-17 under 35 U.S.C.
§ 103(a) over Tan and Philipse and/or Ishii is affirmed.
The rejection of claims 1--4, 11-17, and 19 under 35 U.S.C. § 103(a)
over Tan and Philipse and/or Ishii and Nishiya is affirmed.
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The rejection of claims 1--4, 11-17, and 19 on the ground of
nonstatutory obviousness-type double patenting over claims 1-21 of
Sherman is affirmed.
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).
AFFIRMED
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