Ex Parte Keller et al

Patent Trial and Appeal Board

May 19, 2015

12911117 (P.T.A.B. May. 19, 2015)

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.
12/911,117 10/25/2010 Teddy M. Keller 100785-US1 9519
26384 7590 05/20/2015
NAVAL RESEARCH LABORATORY
ASSOCIATE COUNSEL (PATENTS)
CODE 1008.2
4555 OVERLOOK AVENUE, S.W.
WASHINGTON, DC 20375-5320
EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
05/20/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TEDDY M. KELLER and MATTHEW LASKOSKI
1

____________

Appeal 2013-005772
Application 12/911,117
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 10–13. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants claim a mixture comprising a transition metal compound
such as a metal carbonyl salt and a material such as an aromatic polymer,
wherein the material is free of ethynyl groups (sole independent claim 10).

1
The Government of the United States of America, as represented by the
Secretary of the Navy, is identified as the real party in interest. App. Br. 2
nd

page (the pages of the Appeal Brief are not correctly numbered).
Appeal 2013-005772
Application 12/911,117
2
A copy of representative claim 10, taken from the Claims Appendix of
the Appeal Brief, appears below.
10. A mixture comprising:
a transition metal compound selected from metal
complex, metallocene compound, metal carbonyl salt,
phosphine metal salt, metal carbonyl-ethynyl complex, and
metal carbonyl-metallocenylethynyl containing complex; and
a material selected from the group consisting of an
aromatic polymer, a precursor of an aromatic polymer, and an
aromatic monomer;
wherein the material is free of ethynyl groups.
The Examiner rejects claims 10–13 under 35 U.S.C. § 102(b) as
anticipated by Ziolo (US 4,245,026 issued Jan. 13, 1981).
The Examiner finds the claim 10 transition metal compound is
satisfied by Ziolo’s disclosure of a transition metal carbonyl and that the
claim 10 material such as an aromatic polymer is satisfied by Ziolo’s
disclosure of a phenolic resin (Ans. 4–5).
However, as correctly explained by the Appellants (App. Br. 3
rd
and
4
th
pages; Reply Br. 1), Ziolo’s carbonyl is present only as a precursor
material which is thermally decomposed into a transition metal or its oxide
in order to form the desired particle product (Ziolo abst., col. 4, ll. 59–68,
claim 1), and Ziolo’s phenolic resin (i.e., the phenolic resin identified by the
Examiner) (id. at col. 6, l. 23) is present only as a coating applied to the
particle product after decomposition of the carbonyl (id. at col. 5, l. 61–col.
6, l. 26). For these reasons, the Ziolo ingredients referred to by the
Examiner are present only separately rather than as a mixture in accordance
with claim 10.
Therefore, we do not sustain the § 102 rejection of claims 10–13.
Appeal 2013-005772
Application 12/911,117
3
The Examiner rejects claims 10–13 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1–12
of Keller (US 6,846,345 B1 issued Jan. 25, 2005).
The Examiner states that “it would be within ordinary skill in the art
at the time of the invention was made [sic] to obtain a carbon composition
including transition metal nanoparticles from various of metal compound
and aromatic polymer compound in accord with the claims of 1-12 of
[Keller]” (Ans. 6).
Appellants argue:
The present claims recite an aromatic polymer, a precursor of
an aromatic polymer, or an aromatic monomer that is free of
ethynyl groups. . . . [T]he claims of the prior [Keller] patent do
not recite such materials that are free of ethynyl groups and in
fact positively require the presence of ethynyl groups. No
rationale has been given for modifying the claims of the prior
patent in this manner.
(App. Br. 6
th
page.)
In the record before us including the Response to Argument section of
the Answer (Ans. 7–8), the Examiner does not present any finding or
rationale in support of the proposition that the materials recited in Keller’s
claims 1–12 either correspond to or would have suggested a material such as
an aromatic polymer which is free of ethynyl groups as required by claim
10.
For this reason, we also do not sustain the double patenting rejection
of claims 10–13.
The decision of the Examiner is reversed.
REVERSED
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