Ex Parte Koch et al

Patent Trial and Appeal Board

Feb 27, 2017

12293166 (P.T.A.B. Feb. 27, 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.
12/293,166 09/16/2008 Matthias Koch MERCK-3520 8396
23599 7590 03/01/2017
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BLVD.
SUITE 1400
ARLINGTON, VA 22201
EXAMINER
KRYLOVA, IRINA
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS KOCH, GERHARD JONSCHKER, and
JOERG PAHNKE
Appeal 2014-008843
Application 12/293,166
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
JAMES C. HOUSEL, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1—6
and 8—25.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellants state that the real party in interest is “MERCK PATENT
GESELLSCHAFT” (Appeal Brief filed April 10, 2014, hereinafter “Br.,” 1)
2 Br. 1, 4—15; Final Office Action (notice delivered electronically on
September 10, 2013), hereinafter “Final Act.,” 4—30; Examiner’s Answer
(notice delivered electronically on June 6, 2014), hereinafter “Ans.,” 2—20.
Appeal 2014-008843
Application 12/293,166
BACKGROUND
The subject matter on appeal relates to redispersed nanoparticles and a
process for producing them (Specification, hereinafter “Spec.,” 1,11. 3—4).
According to the Appellants, these nanoparticles may be used “in
formulations, surface coatings, paints and plastics or precursors thereof’ {id.
at 1,11.4-5).
Representative claim 1 is reproduced from page 16 of the Appeal
Brief (Claims Appendix), with key disputed limitations highlighted, as
follows:
1. Redispersed nanoparticles obtainable by:
a) applying at least one surface modifier to nanoparticles
dispersed in a first solvent, wherein said at least one surface
modifier contains at least one functional group, wherein said
least one functional group is a thiol, sulfide, disulfide, or
polysulfide,
b) subjecting said nanoparticles to radical polymerization
in the presence of organic monomers, wherein said at least one
surface modifier containing at least one functional group
applied in a) functions as radical chain-transfer agent, whereby
the resultant particles are singular redispersible nanoparticles,
whose surfaces have been modified, said singular redispersible
nanoparticles are in the form of core/shell particles, wherein the
nanoparticle is the core which is surrounded by a shell of
surface modifier and polymer, and
c) removing said first solvent and redispersing the
nanoparticles in a second solvent that is different than said
first solvent to obtain said redispersed nanoparticles, and
wherein said second solvent is a hydrophobic solvent.
Claim 6 (the only other independent claim) is directed to a process and
similarly recites a step of “c) removing said first solvent and redispersing the
2
Appeal 2014-008843
Application 12/293,166
redispersible nanoparticles in a second solvent that is different than said first
solvent, and said second solvent is a hydrophobic solvent” (Br. 17).
REJECTIONS ON APPEAL3
The Examiner rejected the claims under pre-AIA 35 U.S.C. § 103(a)
as follows:
I. Claims 1—6 and 8—25 as unpatentable over Shiratsuchi et
al.,4 (hereinafter “Shiratsuchi”), in view of Koyanagi et
al.,5 (hereinafter “Koyanagi”), or, in the alternative, as
further evidenced by Tsubokawa et al.,6 (hereinafter
“Tsubokawa”);
II. Claims 1—6 and 8—25 as unpatentable over Koyanagi or,
in the alternative, as further evidenced by Tsubokawa;
III. Claims 1—6 and 8—25 as unpatentable over Yamasaki et
al.,7 (hereinafter “Yamasaki”), in view of Koyanagi; and
IV. Claims 1—6 and 8—25 as unpatentable over Kim et al.8
(hereinafter “Kim”).
(Final Act. 5—29; Ans. 2—3, 4—20.)
3 On page 3 of the Answer, the Examiner withdrew two rejections of claims
1—6 and 8—25 under pre-AIA 35 U.S.C. § 112, || 1 and 2 (Final Act. 3—4),
respectively. Therefore, these rejections are not before us.
4 US 5,856,379, issued January 5, 1999.
5 US 2003/0193037 Al, published October 16, 2003.
6 N. Tsubokawa et al., “Polymerization of Vinyl Monomers in the Presence
of Silica Having Surface Functional Groups,” 271 Colloid Polymer Sci.
940-946 (1993).
7 US 7,001,673 B2, issued February 21, 2006.
8 US 8,262,939 B2, issued September 11, 2012.
3
Appeal 2014-008843
Application 12/293,166
DISCUSSION
Rejections I—III
In Rejections I—III, the Examiner relied on Koyanagi’s disclosure for
the requirement in independent claims 1 and 6 that the nanoparticles are
redispersed in a hydrophobic solvent (Final Act. 6, 12—13, 18—19).
Specifically, the Examiner found that Koyanagi discloses a modified silica
dispersion produced by a process in which, after the silica is modified, water
or organic dispersion media is replaced with a different dispersion media
having a dielectric constant of 10 or more (e.g., id. at 6). The Examiner
“noted that 1,2-dichloroethane solvent, which appears to be a hydrophobic
solvent, has a dielectric constant of 10.42, and therefore, it would have been
obvious to a one of ordinary skill in the art to choose 1,2-dichloroethane as
the second dispersion media . . . .” (id. at 6—7). According to the Examiner
(id. at 7), “[c]ase law holds that the selection of a known material based on
its suitability for its intended use supports prima facie obviousness.”
The Appellants contend that “[n]one of the references cited by the
Examiner teach or suggest redispersing the nanoparticles in a second solvent
(different from the first solvent) that is hydrophobic in a manner recited in
the present claims” (Br. 5). Regarding Koyanagi, the Appellants argue, inter
alia, that Koyanagi teaches redispersing the modified silica in a solvent
having a dielectric constant of from 10—85 when the initial solvent has a
dielectric constant less than 10 to avoid particle instability in the sol and
gelation (id. at 7). According to the Appellants (id.), Koyanagi lists and
exemplifies only hydrophilic solvents and does not teach 1,2-dichloroethane,
which the Examiner considers as hydrophobic. Furthermore, the Appellants
argue that a person having ordinary skill in the art would have considered a
4
Appeal 2014-008843
Application 12/293,166
solvent having a dielectric constant of 10—85 to be generally hydrophilic and
that 1,2-dichloroethane would be considered a polar aprotic solvent (id. at 7—
8).
We agree with the Appellants that the Examiner’s rejection is not
well-founded. Even assuming that 1,2-dichloroethane has a dielectric
constant of 10.42, the Examiner failed to demonstrate that 1,2-
dichloroethane would be considered a “hydrophobic solvent” as required by
claims 1 and 6. Here, Koyanagi lists and exemplifies only hydrophilic
solvents as suitable solvents having a dielectric constant of 10—85 flflf 35—
36). The Examiner failed to demonstrate that 1,2-dichloroethane, which is
not mentioned in any of the prior art references, and Koyanagi’s disclosed
hydrophilic solvents would be interchangeable as redispersion solvent
media. Moreover, Koyanagi teaches redispersion in a solvent having a
dielectric constant of at least 10 (e.gwater) when the initial solvent has a
dielectric constant less than 10 flflf 36, 40, 45). Because water (as disclosed
in, e.g., Shiratsuchi (Abst.)) already has the requisite dielectric constant
disclosed in Koyanagi, the Examiner failed to articulate a sufficient reason
with some rational underpinning to support the conclusion that a person
having ordinary skill in the art would have been prompted to remove the
water in either Shiratsuchi or Koyanagi and replace it with 1,2-
dichlorethane.
For these reasons, we cannot uphold Rejections I—III.
Rejection IV
The Examiner found, inter alia, that Kim describes metal oxide
nanoparticles that are redispersed in a “thermoplastic resin, which like
polyolefin, appear to be acting as a hydrophobic solvent” (Final Act. 25).
5
Appeal 2014-008843
Application 12/293,166
According to the Examiner, “[i]n the alternative, it would have been
obviuous [sic] to a one [.vA]of ordinary skill in the art to choose polyolefin
as the thermoplastic resin in which the modified particles of Kim et al will
be redispersed since it wopuld [sA] have been obvious to substitute one
equivalent for another” (id., boldness omitted). In the Examiner’s view, the
broadest reasonable interpretation of “hydrophobic solvent” as defined the
Specification (Spec. 2,11. 30-32) includes polymers such as ethylene rubber
as disclosed in Kim (Ans. 19—20).
The Appellants contend that Kim does not disclose or suggest
redispersing the particles in a second solvent that is hydrophobic (Br. 13).
According to the Appellants (id.), “[t]he dispersion of powders in a rubber­
like polymer cannot be compared with the dispersion of particles in a
solvent.”
We agree with the Appellants because the Examiner’s claim
interpretation of “hydrophobic solvent” is unreasonably broad. In re Baker
Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a
construction that is “beyond that which was reasonable in light of the totality
of the written description”).
In the context of the present Specification, the limitation
“hydrophobic solvent” refers to an organic hydrophobic solvent such as
butyl acetate or tetrahydrofuran and butyl acetate (Spec. 2,11. 30-32, and
Examples 1—5). By contrast, Kim does not refer to the vinyl polymers as
solvents. Although Kim teaches creating a uniform dispersion of
nanoparticles in a vinyl polymer (col. 7,11. 9—11), the vinyl polymer is not
disclosed as a solvent but rather as a co-component in a composite material
(col. 6,11. 54—57; col. 8,11. col. 8,1. 54-col. 9,1. 30).
6
Appeal 2014-008843
Application 12/293,166
Accordingly, we cannot uphold Rejection IV.
SUMMARY
Rejections I—IV are reversed. Therefore, the Examiner’s final
decision to reject claims 1—6 and 8—25 is reversed.
REVERSED
7