Ex Parte Karunaratne et al

Patent Trial and Appeal Board

Nov 8, 2017

13176515 (P.T.A.B. Nov. 8, 2017)

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.
13/176,515 07/05/2011 Veranja Karunaratne 058631/407586 4725
826 7590
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
METZMAIER, DANIEL S
ART UNIT PAPER NUMBER
1762
NOTIFICATION DATE DELIVERY MODE
11/13/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VERANJA KARUNARATNE,
GAYAN PRIYADHARSHANA,
SUNANDA GUNASEKARA, NILWALA KOTTEGODA, and
ATULA SENARATNE
Appeal 2017-000509
Application 13/176,515
Technology Center 1700
Before KAREN M. HASTINGS, AVELYN M. ROSS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—4 and 10—16. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 In this decision, we refer to the Specification filed July 5, 2011 (“Spec.”),
the Final Office Action mailed December 17, 2014 (“Final Act.”), the
Appeal Brief filed January 19, 2016 (“Appeal Br.”), the Examiner’s Answer
mailed August 12, 2016 (“Ans.”), and the Reply Brief filed October 12,
2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Sri Lanka Institute of
Nanotechnology. Appeal Br. 2.
Appeal 2017-000509
Application 13/176,515
The subject matter on appeal relates to a dispersion of magnetite
nanoparticles and a process for making the same. Spec. 1—2. Claims 1 and
12, reproduced below from the Claims Appendix of the Appeal Brief, are
illustrative of the claims on appeal.
1. A process for making magnetite nanoparticle dispersions
comprising:
(a) providing a magnetite ore;
(b) destructuring the magnetite ore;
(c) contacting the destructured magnetite ore with one of
the group consisting of a long chain alkyl carboxylic acid, a
natural oil containing long chain carboxylic acid carboxyl
groups, and combinations thereof to form stabilized
nanoparticles; and
(d) dispersing the stabilized nanoparticles in alcoholic
solvent.
12. A dispersion formed by a process comprising the steps
of:
(a) providing a magnetite ore;
(b) destructuring the magnetite ore;
(c) contacting the destructured magnetite ore with one of
the group consisting of a long chain alkyl carboxylic acid, a
natural oil containing long chain carboxylic acid carboxyl
groups, and combinations thereof to form stabilized
nanoparticles; and
(d) dispersing the stabilized nanoparticles in alcoholic
solvent.
Appeal Br. 14, 15 (Claims Appendix).
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REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1: Claims 1, 4, 12, and 13 under 35 U.S.C. § 103(a) as
unpatentable overPapell (US 3,215,572, issued November 2, 1965)
(“Papell”) in view of Liberti (US 6,120,856, issued September 19, 2000)
(“Liberti”), and Ibert Mellan, Industrial Solvents Handbook (2nd ed. 1977)
(“Industrial Solvents Handbook”);
Rejection 2: Claims 1—4, 12, 13, 15, and 16 under 35 U.S.C. § 103(a)
as unpatentable over Papell in view of Liberti, Wyman (US 4,430,239,
issued February 7, 1984) (“Wyman”), and S. Stephen Papell and Otto C.
Faber, Jr., On the Influence of Nonuniform Magnetic Fields On
Ferromagnetic Colloidal Sols, NASA Technical Note, 1—25 (August 1968)
(“Papell II”), and Appellants’ admission (Spec. 6, sole full 1); and
Rejection 3: Claims 1—4, and 10—16 under 35 U.S.C. § 103(a) as
unpatentable over Papell in view of Liberti, Wyman, Papell II, Appellants’
admission, and Fritsch, PLANETEN-MIKROMUHLEPULVERISETTE 7
premium line Operating Manual, Fritsch GmbH, 1—44 (June 2007)
(“Fritsch”).
DISCUSSION
Claim Construction
We begin by construing claim 1. During examination, claims are to
be given their broadest reasonable interpretation consistent with the
Specification, and the language should be read in light of the Specification
as it would be interpreted by one of ordinary skill in the art. In re Amer.
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Acad. OfSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations
omitted).
Claim 1 is directed to a method of making magnetite nanoparticles.
The method includes (a) providing a magnetite ore; (b) destructuring the
magnetite ore; (c) contacting the destructured magnetite ore with one of a
group of a long chain alkyl carboxylic acid, a natural oil containing long
chain carboxylic acid carboxyl groups, and combinations thereof to form
stabilized nanoparticles; and (d) dispersing the stabilized nanoparticles in an
alcoholic solvent.
The term “nanoparticle” is defined as “a particle having a size in the
range of 10 to 1000 nm. Spec. 4,11. 12—13.
The term “destructured” is defined in Appellants’ Specification as “a
reduction in size of the magnetite ore particulate that is to be processed into
nanoparticles.” Id. 4,11. 6—7. According to the Specification, destructing
typically is carried out through wet or dry grinding. Id. at 6, sole full \
Nanoparticles formed during destructuring tend to agglomerate into large
macroscopic aggregates. Id. at 6. To prevent agglomeration, a stabilizer is
added during grinding of the magnetite ore. Id. The stabilizer can be a long
chain carboxylic acid molecule, for example oleic acid, that reacts with (i.e.,
binds covalently to) the surface hydroxyl groups of the magnetite to provide
stability during formation of nanoparticles. Id. at 2—3, 6—7. The stabilized
nanoparticles (e.g., oleic-acid-coated nanoparticles) are then dispersed in a
continuous phase, for example, an alcohol solvent. Id. at 2—3, 9
(Example 2). Accordingly, in the context of Appellants’ Specification, one
of ordinary skill in the art would understand that Appellants’ process
requires two solvents—one solvent (stabilizer) used in destructing the
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magnetite ore to form stabilized nanoparticles, and another solvent (i.e.,
alcoholic solvent) for dispersing the stabilized nanoparticles. In other
words, in the context of Appellants’ Specification, one of ordinary skill in
the art would understand that the stabilizer used during destructuring (e.g.,
long chain alkyl carboxylic acid) in step (c) of claim 1 ’s process is not the
alcoholic solvent for dispersing the stabilized nanoparticles in step (d) of
claim l’s process.
Having construed the claims, we turn to the rejections on appeal and
the issue of whether the Examiner reversibly erred in finding the claims
obvious over the combination of prior art references.
Rejection 1
Claims 1 and 4
The Examiner finds that Papell discloses preparing a colloidal
suspension of magnetized iron particles using grinding. Final Act. 5 (citing
Papell 2:27—29). The Examiner finds that Papell discloses grinding
commercially obtained powdered magnetite in a ball mill in the presence of
a propellant, such as heptane, and a grinding agent, such as oleic acid, which
prevents agglomeration or welding of the minute particles as grinding
progresses. Final Act. 5 (citing Papell 2:24—34, 3:7—21); see also
Liberti 3:26-44 (discussing Papell). The Examiner finds that Papell
discloses the nanoparticles have a particle distribution of approximately
0.06 microns to 0.24 microns (approximately 60 nm to 240 nm). Final
Act. 5 (citing Papell 3:24—27). The Examiner also finds that Papell discloses
using other grinding agents, such as cetyl alcohol, which is an alcohol
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solvent as evidenced by Industrial Solvent Handbook. Final Act. 6 (citing
Papell 3:75—4:2; Industrial Handbook 216, 217, and 230).
The Examiner determines that it would have been obvious to one of
ordinary skilled in the art to employ a long chain alkyl carboxylic acid (e.g.,
oleic acid) with cetyl alcohol in making Papell’s magnetite dispersions.
Final Act. 7.
Appellants argue that Papell and Liberti only disclose cetyl alcohol
can be used as an additional grinding fluid, but fail to disclose dispersing the
stabilized nanoparticles in an alcoholic solvent, as required by the process of
claim 1. Appeal Br. 6; Papell 3:75—4:2.
Appellants’ argument is persuasive of reversible error. Papell and
Liberti disclose grinding powdered magnetite in a ball mill using cetyl
alcohol as a grinding agent. Papell 3:75—4:2; Liberti 3:26-44. Although
cetyl alcohol is an alcoholic solvent, the Examiner has not provided
sufficient explanation supported by evidence that after grinding, Papell’s
stabilized nanoparticles would be dispersed in cetyl alcohol. See, e.g.,
Papell 2:44—50 (“Ideally,... the formed magnetic colloidal propellant
comprises 0.5 percent magnitite (by weight), with the remainder of the
propellant solution formed in large part of the combustible propellant with
only a small percentage (less than 1 percent by weight) of grinding aide.”).
Thus, we cannot sustain the rejection of claims 1 and 4 under
35 U.S.C. § 103(a) over Papell, Liberti, and Industrial Solvents Handbook.
Claims 12 and 13
We note that claim 12 is a product-by-process claim. As a product-
by-process claim, determination of patentability is based on the product
itself, even though the claim is limited by a process. See In re Thorpe,
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111 F.2d 695, 697 (Fed. Cir. 1985). “If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” Id. On this record, the Examiner has not provided a sufficient
explanation supported by evidence that the dispersion formed by claim 12’s
process would be obtained by Papell’s method. That is, the Examiner has
not established that Papell’s method would result in a dispersion of
stabilized nanoparticles dispersed in an alcoholic solvent. Thus, we cannot
sustain the rejection of claims 12 and 13 under 35 U.S.C. § 103(a) over
Papell, Liberti, and Industrial Solvents Handbook.
Rejection 2
Claims 1—4, 15, and 16
Appellants argue the claims as a group subject to the second-stated
ground of rejection. We select claim 1 as representative, and claims 2—4, 15,
and 16 will stand or fall with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv).
The Examiner relies on the same findings regarding Papell and Liberti
as discussed above with respect to Rejection 1. Final Act. 8. In addition, the
Examiner finds that Wyman discloses preparing a stable ferrofluid by
forming a colloidal suspension with magnetite particles, for example by
grinding techniques, and then dispersing the suspension of the magnetite
particles with a phosphoric acid alcohol ester dispersing agent in water or
water with a water-soluble or water miscible solvent, such as alcohol. Final
Act. 8 (citing Wyman Abstract, 6:22—34). Specifically, the Examiner finds
that Wyman discloses forming stable ferrofluid compositions containing
magnetite particles in a polar carrier by adding phosphoric acid alcohol
esters dispersing agents to oleic-acid-coated, magnetite particles. Final
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Act. 9 (citing Wyman 4:25—52). The Examiner also finds that Wyman
teaches that its ferrofluids comprise magnetic nanoparticles, prepared by
grinding, of a colloidal size of less than 800 Angstroms (i.e., less than
80 nanometers (nm)), for example 20 to 500 Angstroms (i.e., 2—50 nm),
more particularly 50 to 150 Angstroms (i.e., 5—15 nm). Final Act. 9 (citing
Wyman 5:61—68).
The Examiner determines that one of ordinary skill in the art would
have been led, based on Wyman, to modify PapelTs method by employing
the phosphoric acid alcohol esters with the oleic-acid-coated magnetite
particles for ferrofluid utilities where a water-soluble or water-miscible
solvent, such as alcohol is used as a solvent. Final Act. 10. In addition, the
Examiner determines that one of ordinary skill in the art would have been
led, based on Wyman, to modify Papell’s method and grind the magnetite
particles to less than 80 nm, for example, from 2 nm to 50 nm. Id.
Appellants argue that the Examiner does not explain any rationale for
why a person of ordinary skill in the art would combine the Papell and
Wyman references. Appeal Br. 8. Appellants argue that one of ordinary
skill would not combine Papell and Wyman because, for example, in
Wyman’s method, alcohol is used as a diluent, but in Papell’s method, there
is no need or reason to use a diluent particularly due to PapelTs solutions
lower viscosity. Id. at 8—9.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection. The Examiner finds, and Appellants do not dispute,
that Wyman discloses forming stable ferrofluid compositions containing
magnetite particles in a water-miscible solvent, such as alcohol, by adding
phosphoric acid alcohol esters dispersing agents to oleic-acid-coated,
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magnetite particles, prepared by grinding. Compare Final Act. 8—9 (citing
Wyman 4:25—52, 6:22—34) with Appeal Br. 8—9. The Examiner also finds,
and Appellants do not dispute, that Wyman teaches its ferrofluids comprise
magnetic nanoparticles, prepared by grinding, of a colloidal size of less than
800 Angstroms (i.e., less than 80 nanometers (nm)), for example 20 to 500
Angstroms (i.e., 2—50 nm), more particularly 50 to 150 Angstroms (i.e., 5—
15 nm). Compare Final Act. 9 (citing Wyman 5:61—68) with Appeal Br. 8—
11. Thus, the Examiner’s findings regarding Wyman amply support a
conclusion that claim 1 ’s method would have been obvious to a person
having ordinary skill in the art. In re Bush, 296 F.2d 491, 496 (CCPA 1961)
(The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new
ground.); see also In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976) (no
new ground of rejection where the Board limited its discussion to three of
four cited references and relied on one of the secondary references as the
closest prior art reference). Thus, we sustain the rejection of claims 1—4, 15,
and 16 under 35 U.S.C. § 103(a) over Papell, Liberti, Wyman, Papell II, and
Applicants’ admission.
Claims 12 and 13
As discussed above, claim 12 is a product-by-process claim. Because
we find that Wyman discloses the process recited in Appellants’ claim 1, we
also find that there is sufficient factual basis to establish that the dispersion
produced by Wyman’s process would be the same as the dispersion
produced by claim 12’s process. Appellants have not directed us to evidence
in the record to establish an unobvious difference between the dispersion
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formed by Wyman’s process and the dispersion produced by claim 12’s
process.
Rejection 3
Claims 1—4, 12, 13, 15, and 16
The Examiner relies on the same findings regarding Wyman as
discussed above with respect to Rejection 2, and only relies on Fritsch for
the grinding apparatus and the grinding parameters required by claims 10,
11, and 14. Final Act. 12. Thus, we sustain the rejection of claims 1—4, 12,
13, 15, and 16 for the same reasons as discussed above with regard to
Rejection 2.
Claims 10, 11, and 14
Claim 10 depends from claim 1 and requires “the destructuring of the
magnetic ore is done by grinding in a FRITSCH Planeten- Micromuhle
Pulverisette 7 premium line nano-grinder in the presence of oleic acid using
tungsten carbide grinding balls and zirconium oxide grinding balls.”
Claims 11 and 14 depend from claim 10 and recite parameters by
which the grinding is performed.
Appellants argue that claims 10, 11, and 14 require a “specific
sequence, type, and duration of varying grinding balls.” Appeal Br. 11.
Appellants further argue that “[njothing in any of the cited references,
including Fritsch, discloses or even suggests such a sequence.” Id.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s rejection. Wyman teaches destructuing magnetite ore in the
presence of oleic acid. Wyman 4:25—45, 6:22—34. The Examiner finds, and
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Appellants do not dispute, that Wyman teaches its ferrofluids comprise
magnetic nanoparticles, prepared by grinding, of a colloidal size of less than
800 Angstroms (i.e., less than 80 nanometers (nm)), for example 20 to 500
Angstroms (i.e., 2—50 nm). Compare Final Act. 9 (citing Wyman 5:61—68)
with Appeal Br. 8—13 Fritsch is evidence that the FRITSCH Planeten-
Micromuhle Pulverisette 7 premium line nano-grinder was commercially
available at the time of Appellants’ invention. The Examiner finds, and
Appellants do not dispute, that Fritsch discloses parameters for selecting the
grinding ball material type (e.g., tungsten carbide and zirconium oxide),
parameters for selecting the grinding ball size based on the size and type of
material to be ground (e.g., 5 mm and 3 mm and smaller), parameters for
selecting the grinding time (e.g., grinding time should be limited to 1 hour at
high speeds), and parameters for selecting the grinding speed based on the
grinding ball size. Compare Final Act. 12—13 (citing Fritsch 14—16, 25, and
29) with Appeal Br. 11—13. Based on those findings, we discern no error in
the Examiner’s determination that it would have been obvious to employ a
commercially available grinder as a grinding apparatus in Wyman’s process,
and select the appropriate grinding ball material type and size as well as the
grinding speed and time, to prepare its magnetite nanoparticles, for example,
nanoparticles having a particle size of about 20 nm or about 30 nm. Final
Act. 13. Appellants have not directed us to sufficient evidence in the record
demonstrating the criticality of the claimed parameters.
Appellants argue that the Examiner erred by improperly ignoring their
evidence of unexpected results. Appeal Br. 5.
We are not persuaded by Appellants’ argument because the Examiner
has properly considered Appellants’ evidence of unexpected results, but
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explains that the evidence is not persuasive because the evidence lacks any
comparative data showing criticality and/or unexpected results of the
claimed steps or compositions. Ans. 15. For at this reason, we also do not
find Appellants’ evidence sufficient to rebut the Examiner's prima facie case
of obviousness.
Accordingly, we sustain the rejection of claims 10, 11, and 14 under
35 U.S.C. § 103(a) over Papell, Liberti, Wyman, Papell II, Applicants’
admission, and Fritsch.
DECISION
For the above reasons, the rejection under 35 U.S.C. § 103(a) of
claims 1,4, 12, and 13 over Papell, Liberti, and Industrial Solvents
Handbook is reversed, and the rejections under 35 U.S.C. § 103(a) of
claims 1—4, 12, 13, 15, and 16 over Papell, Liberti, Wyman, Papell II, and
Appellants’ admission, and of claims 1^4 and 10—16 over those references
additionally in combination with Fritsch are 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).
AFFIRMED
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