Ex Parte Kurtin et al

Patent Trial and Appeal Board

Jul 21, 2017

13536857 (P.T.A.B. Jul. 21, 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.
009335.P005C 8751
EXAMINER
KOSLOW, CAROL M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
13/536,857 06/28/2012 Juanita N. Kurtin
8791 7590 07/21/2017
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
07/21/2017 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 JUANITA N. KURTIN,
ALEX R. GUICHARD, STEVEN M. HUGHES,
ALEX C. MAYER, OUN HO PARK, SHAWN R. SCULLY,
PAUL-EMILE B. TRUDEAU, COLIN C. REESE,
MANAV SHEORAN, and GEORGETA MASSON
Appeal 2016-006970
Application 13/536,857
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35U.S.C. § 134 from the Examiner’s April
10, 2015 decision finally rejecting claims 28, 32, 35—44, 47, and 48. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants state that the real party in interest is Pacific Light Technologies
Corp. (Appeal Br. 1).
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Application 13/536,857
CLAIMED SUBJECT MATTER
Appellants’ invention relates to a solar cell having increased light
conversion efficiency (Spec. 111). According to the Specification, the solar
cell incorporates a photoabsorptive nanomaterial layer that downshifts
incident light to wavelengths more readily absorbed by the solar cell’s
photovoltaic material {id. 13). Claim 28 is representative and is reproduced
below from the Claims Appendix of the Appeal Brief {emphasis added):
28. An optical downshifting material, comprising:
a polymer matrix material', and
a plurality of isolated encapsulated quantum dot
heterostructures (QDHs) dispersed in the polymer matrix
material, each QDH comprising:
a nanocrystalline core comprising a first semiconductor
material',
a nanocrystalline shell comprising a second, different,
semiconductor material at least partially surrounding the
nanocrystalline core; and
an encapsulating coating surrounding the nanocrystalline
core and nanocrystalline shell pairing,
wherein the encapsulating coating isolates the QDHs in
the polymer matrix material',
wherein the optical downshifting material has an onset
absorption wavelength approximately in the range of 500—600
nm, and wherein absorption continuously increases from the
onset absorption wavelength, and wherein the optical
downshifting material has a light emission wavelength greater
than the onset absorption wavelength.
Appeal Br. 18 (Claims App.).
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Application 13/536,857
REJECTIONS2
(1) Claims 28, 32, 35—44, 47, and 48 are rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
(2) Claims 28, 32, 40, and 42-44 are rejected under 35 U.S.C.
§ 102(b) as anticipated by over Akai.3
Appellants do not offer separate arguments in support of any of the
dependent claims, nor independent claim 42; arguments are directed to
limitations recited in independent claim 28 (see Appeal Br. 6—15; Reply Br.
1—14). Accordingly, our discussion will focus on Appellants’ arguments in
support of claim 28. Claims 32, 35—44, 47, and 48 will stand or fall with
claim 28. 37 C.F.R. § 41.37(c)(l)(iv).
DISCUSSION
Rejection (1) under § 112,11
To satisfy the written description requirement of § 112, the
Specification—including the drawings and the originally filed claims—must
2 Claim 48 was subject to a rejection under 35 U.S.C. § 112,11 for reciting
a “step of suspending the QDHs in the matrix comprises isolating the
nanocrystalline core and the shell of each QDH from each other” (Final Act.
7). Furthermore, claims 28, 32, 35—44, 47, and 48 were subject to a
rejection under 35 U.S.C. § 112,12 {id. at 7—8); and claim 36 was subject to
a rejection under 35 U.S.C. § 102(b) {id. at 8). However, these rejections
were withdrawn by the Examiner (Ans. 3—4) and, therefore, are not before
us.
3 Akai et al., WO 2009/041595 Al, published April 2, 2009. (Akai is in
Japanese, and the Examiner relies on an English-language counterpart—
Akai et al., U.S. Patent No. 8,384,064 B2, issued February 26, 2013.
Citations to Akai will reference the U.S. patent.)
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allow a person of ordinary skill in the art to recognize that the inventor
invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989). “[T]he purpose of the written description requirement is to ‘ensure
that the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor’s contribution to the field of art as
described in the patent specification.”’ Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1353—54 (Fed. Cir. 2010) (enbanc) (quoting Univ. of
Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004)).
“[T]he test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art.”
Ariad, 598 F.3d at 1351.
After reviewing the arguments and evidence of record, we find that
Appellants have not shown reversible error in the written description
rejection. Accordingly, we sustain the Examiner’s § 112, first paragraph,
rejection of claims 28, 32, 35—44, 47, and 48 for essentially the reasons set
out by the Examiner in the Answer.
The Examiner finds that the claim terms “polymer matrix material”
(claims 28, 32, 36, 42, and 44) and “the polymer matrix” (claim 48), fail to
comply with the written description requirement because the Specification as
originally filed only discloses “inert polymer matrix material” (Ans. 2, citing
Spec. 1 55, claim 33; see also Final Act. 7). In particular, the Examiner
finds that the claimed
‘polymer matrix material’ reads on any and all polymer matrix
materials, such as those which are not inert such as polymers
which can react with the encapsulating coating and those having
functional groups which bond the polymer and encapsulating
coating, and polymers which cannot be utilized [in] the matrix of
a wavelength converting layer such as rubbers, translucent and
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opaque polymers, which would not allow the transmission of
light through the layer so that it can be absorbed by the
photovoltaic material of the solar cell.
(Ans. 9-10 (emphasis added)).
In response, Appellants argue that 1 55 in the Specification does not
require suspending nanomaterials in only an inert polymer matrix (Appeal
Br. 13; see also Reply Br. 13). Rather, Appellants assert that 155 “states
that nanomaterials can be suspended in an inert polymer matrix,” thereby
implying nanomaterial suspension in polymer matrix materials which are not
inert (id. (emphasis added); see also Reply Br. 13). Appellants further argue
that the claim terms “a polymer matrix material” and “a polymer matrix” are
“more narrow term[s]” supported by disclosures in the Specification, which
refer to “a matrix,” “matrix media,” and a “downshifting layer matrix”
(Appeal Br. 13—14, citing Spec. H 22, 23, 56, 58, and 75).
Appellants have not offered a persuasive explanation of why the
disclosure of 1 55 describes the claim limitations at issue. We agree with the
Examiner that, based on the Specification, the scope of the inventor’s
contribution to the field of art does not extend to any and all polymer matrix
materials, such as those which are not inert. SeeAriad, 598 F.3d at 1353—
54. Similarly, Appellants have not proffered an explanation of how the
claim elements at issue are described within the meaning of § 112 by H 22,
23, 56, 58, and 75. Appellants’ citations to these paragraphs ignore that the
claim elements “polymer matrix material” and “the polymer matrix” are
terms broader in scope than the “inert polymer matrix material” disclosed in
155.
The Examiner also finds that the claimed feature requiring that
“absorption continuously increases from the onset absorption wavelength”
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(claims 28 and 42) lacks any support in the Specification as originally filed
(Final Act. 7).
Appellants argue that Figure 4 of the Specification shows that “the
absorption begins at the onset absorption wavelength of around 600 nm, and
absorption continuously and rapidly increases, moving to the left, toward the
shorter wavelengths, such as wavelengths in the ultraviolet spectrum,
generally understood to be at wavelengths in the range of 10 — 400 nm”
(Appeal Br. 14). Appellants further argue that H 71 and 82, “when read in
combination with viewing” Figure 4, provide support for the claim elements
at issue {id. at 14—15).
Appellants’ arguments are not persuasive because the claim language
at issue reads: “absorption continuously increases . . .” (claims 28 and 42
(emphasis added)). As the Examiner finds, “Figure 4 shows that in the
region between 450 and 500 nm, there is a decrease in absorption” (Ans.
10). Thus, Figure 4 of the Specification does not depict a continuous
increase in absorption. Moreover, we find Appellants’ arguments are
insufficient to rebut the Examiner’s findings that: (i) “the phrase ‘rapidly
increases’ [in 171] does not give any indication was [sic as] to whether the
increase is continuous or not” (id.); and (ii) 1 82 “is silent as to absorption
from the onset absorption wavelength . . .” (id. at 11).4 Therefore, we are
not persuaded of reversible error in the Examiner’s § 112,11 rejection.
4 Appellants further argue that “Fig. 4, along with paragraph [0079]
provide[s] support for the limitation of absorption increases from the onset
absorption wavelength” (Reply Br. 14). Even assuming that Appellants’
position is correct, Appellants’ argument fails to address the Specification’s
lack of support regarding the claimed continuous increase in absorption.
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Rejection (2) under $ 102(b)
After reviewing the arguments and evidence of record, we find that
Appellants have not shown reversible error in the anticipation rejection.
Accordingly, we sustain the Examiner’s § 102(b) rejection of claims 28, 32,
40, and 42 44 for essentially the reasons set out by the Examiner in the
Answer. We add the following for emphasis.
It is well established that “when, as by a recitation of ranges or
otherwise, a claim covers several compositions, the claim is ‘anticipated’ if
one of them is in the prior art.” Titanium Metals Corp. of Am. v. Banner,
778 F.2d 775, 782 (Fed. Cir. 1985). It is also well established that “[a] prior
art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it
discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379
(Fed. Cir. 2012) (citing Verizon Servs. Corp. v. CoxFibernet Va., Inc., 602
F.3d 1325, 1336—37 (Fed. Cir. 2010)). The anticipatory reference,
furthermore, must disclose the claimed invention “such that a skilled artisan
could take its teachings in combination with his own knowledge of the
particular art and be in possession of the invention.” In re Graves, 69 F.3d
1147, 1152 (Fed. Cir. 1995) (quoting In reLeGrice, 301 F.2d 929, 936
(CCPA 1962)).
In this instance, Appellants argue, inter alia, that the Examiner has
failed to show that Akai discloses each and every limitation of claim 28
(Appeal Br. 6). In particular, Appellants argue that the Examiner fails to
provide any technical reasoning to explain why Akai’s CdSe/CdS core shell
particles would necessarily disclose the elements recited in claim 28, namely
“‘an optical downshifting material,’ ‘wherein the optical downshifting
material has an onset absorption wavelength approximately in the range of
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500-600nm,’ ‘wherein the absorption continuously increases from the onset
absorption wavelength,’ and ‘wherein the material has a light emission
wavelength greater than the onset absorption wavelength’” (Appeal Br. 9—
10).
The Examiner, however, finds that each of the limitations recited in
claim 28 read on Akai’s disclosure because, inter alia, Akai’s CdSe/CdS
core shell particles are “identical to the claimed CdSe/CdS core shell
quantum dot heterostructures, [thus] they must have the argued properties.
The basic fact in chemistry [is] that identical compounds must have the
identical properties is the basis for the conclusion” (Ans. 5).
In response, Appellants argue that
[c]laims 28 and 42 are not limited to CdSe/CdS core/shell
nanoparticles; only dependent claims 40 and 47 are so limited.
Thus, even if Appellants were to accept the ‘fact in chemistry
that identical compounds must have identical properties[,’] such
basis does not establish a prima facie case of anticipation of
claims 28 and 42.
(Reply Br. 3).
Appellants further argue that “even if claim 40 recites the chemical
compounds found in one embodiment of the first semiconductor material
and the second semiconductor material recited in claim 28, claim 28 is not
so limited ... to specific compounds . . .” {id. at 4; see also id. at 6, 7, 8,
11).
During prosecution, words in the claims under examination are given
their broadest reasonable interpretation. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). The Specification discloses that
“[semiconductor nanocrystals, such as cadmium selenide . . .” may be used
as specifically engineered nanomaterial in the form of QDHs (Spec. H 61,
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63). The Specification further discloses that the claimed “quantum dot
heterostructures can include [the] following inorganic compounds and/or
any combination of alloys between them: CdSe, CdS, CdTe, ZnSe, ZnS,
ZnTe, CuS2, CuSe2, In2S3, In2Se3, CuGaSe2, CuGaS2, CuInS2, CuInSe2,
PbSe, PbS, Si02, Ti02, ZnO, ZrO” {id. at | 68). Based on the language of
the claim and the Specification, claim 28 is drawn to a genus of QDH
semiconductor materials and claim 40 requires two species within this
claimed genus, namely CdSe and CdS. Thus, a finding that the prior art
discloses a composition which falls within the scope of claim 28 (i.e., one
which includes CdSe or CdS) would be sufficient to support a finding of
anticipation. See Titanium Metals, 778 F.2d at 782 (Fed. Cir. 1985) (holding
that an earlier species disclosure in the prior art defeats any generic claim);
see also In re Slayter, 276 F.2d 408, 411 (CCPA 1960) (“It is well settled
that a generic claim cannot be allowed to an applicant if the prior art
discloses a species falling within the claimed genus.”).
Appellants, furthermore, have not met their burden in demonstrating
that Akai’s CdSe/CdS core shell particles do not possess the claimed
characteristics of the QDHs. It is well established that when claimed and
prior art products are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). This is
true whether the rejection is under 35 U.S.C. § 102 (anticipation) or 35
U.S.C. § 103 (obviousness), and is based on the fact that the PTO is not in a
position to manufacture products or to obtain and compare prior art
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products. Id. Therefore, we are not persuaded of reversible error in the
Examiner’s § 102(b) rejection. See In re Graves, 69 F.3d at 1152.
CONCLUSION
We AFFIRM the rejection of claims 28, 32, 35—44, 47, and 48 under
35 U.S.C. § 112,11 as failing to comply with the written description
requirement.
We AFFIRM the rejection of claims 28, 32, 40, and 42-44 under 35
U.S.C. § 102(b) as anticipated by Akai.
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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