Ex Parte LI

Patent Trial and Appeal Board

Aug 17, 2016

11893597 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111893,597 08/16/2007 Yi-QunLi
22798 7590 08/17/2016
QUINE INTELLECTUAL PROPERTY LAW GROUP, P,C
POBOX458
ALAMEDA, CA 94501
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.
318-02231 ous 5168
EXAMINER
FLINDERS, JEREMY C
ART UNIT PAPER NUMBER
1639
MAILDATE DELIVERY MODE
08/17/2016 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 YI-QUN LI 1
Appeal2014-009981
Application 11/893,597
Technology Center 1600
Before DONALD E. ADAMS, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for preparing a combinatorial library which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is directed to
compositional gradients of combinatorial materials libraries,
where the libraries comprise a compositional gradient of at least
two polymer-stabilized liquids deposited on a substrate. The
1 Appellants identify the Real Party in Interest as Intematix Corporation.
Appeal Br. 1.
Appeal2014-009981
Application 11/893,597
gradient may be of a continuous nature, a linear nature, or a
non-linear nature. The compositional gradient combinatorial
materials library may comprise a gradient of the first polymer-
stabilized liquid ranging from about 100 percent at a first
location of the library, and continuously decreases to about zero
percent at a second location of the library, and a gradient of the
second polymer-stabilized liquid ranging from about 100
percent at the second location of the library, and continuously
decreases to about zero percent at the first location of the
library.
Spec. 3, 11. 3-12.
Claims 1-6 and 17-21 are on appeal. 2 Claim 1 is illustrative and
reads as follows:
1. A compositional gradient combinatorial materials library
compnsmg
a compositional gradient formed by at least two polymer-
stabilized liquids dispensed to a substrate, the compositional
gradient being continuous along the substrate;
\vherein the at least t\vo polymer-stabilized liquids each include
a solvent and one or more inorganic materials substantially
homogenously distributed within the solvent;
and
wherein subsequent to being dispensed the solvent is
evaporated.
The claims stand rejected as follows:
Claims 1---6 and 17-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moini. 3
2 "Claims 7-16 have been withdraw as being drawn to nonelected subject
matter." Final Act. 2 (emphasis removed).
3 Moini et al., US 2003/0190408 Al (published Oct. 9, 2003) ("Moini").
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Appeal2014-009981
Application 11/893,597
DISCUSSION
Issue
In rejecting claims 1---6 and 17-21 the Examiner finds that Moini
teaches a compositional gradient library wherein "one or more compositions
are in the form of [a] continuous concentration gradient( s) along a
substrate." Final Act. 3 (underline original). The Examiner also finds that
Moini discloses that the gradient is formed by at least two polymer-
stabilized liquids dispensed to a substrate. Id. The Examiner goes on to find
that the polymer-stabilized liquids include a solvent, which can be an
organic solvent or water and the liquid can contain inorganic materials such
as metal salts or oxides. Final Act. 3--4. The Examiner finds that Moini
teaches that the solvents are evaporated after they are deposited on the
substrate. Final Act. 4. The Examiner concludes that
it would have been prima facie obvious for one of ordinary skill
in the art at the time of the invention \~1as made to prepare the
compositional gradient libraries as per Moini et al. as above and
instantly claimed, since Moini et al. teaches that there are a
finite number of identified, predictable potential solutions to
yield useful compositional gradient libraries, and given that []
one of ordinary skill in the art could have pursued these known
potential solutions with a reasonable expectation of success,
that selecting and combining of the specific features listed
above would have been at least obvious to try. The above cited
prior art suggests or motivates the practice of the instant claims
and therefore supports a reasonable expectation of success of
practicing the limitations of the claimed subject matter.
Final Act. 6-7.
Appellant contends that Moini teaches two separate embodiments, one
involving a continuously changing gradient and other involving separate
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Appeal2014-009981
Application 11/893,597
discretely displaced arrays and that the Examiner improperly ties aspects of
the one embodiment to the other embodiment. Appeal Br. 3. Appellant
argues that different techniques are used to make the structures of the two
embodiments. Appeal Br. 4. Appellant also argues that the examples are
limited to the discrete gradient embodiment and that the teachings are
inapplicable to the continuous gradient embodiment. Appeal Br. 5-7.
Appellant argues that there is nothing in the reference to suggest applying
the teachings related to the discrete gradient embodiment to the continuous
gradient embodiment. Appeal Br. 8.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 1-6 and 17-21
would have been obvious over Moini under 35 U.S.C. § 103(a).
Findings of Fact
We adopt as our own the Examiner's findings and analysis. The
following findings are included for emphasis and reference convenience.
FF 1. Moini teaches the formation of "composite samples using one
or more coatings in the form of continuous concentration gradients placed on
the surface of a substrate." Moini if 22.
FF2. The gradient coatings can be generated by using spray coating
techniques or screen printing techniques. Moini if 22.
FF3. Moini discloses the use of a carrier which contains a solvent
and a polymer. Moini iii! 79-86.
FF4. Moini teaches that the solvents used in the carrier can be
organic solvents and/or water. Moini iii! 79-86.
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Appeal2014-009981
Application 11/893,597
FF5. Moini teaches that the compositions used to form gradients can
contain inorganic materials such as metals and metal oxides. Moini i-fi-136-
40.
FF6. Moini teaches that after the composition is deposited, the
solvent is removed by heating the coated substrate. Moini i1 73.
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Claim 1 is representative of the rejected claims and relates to a
compositional gradient combinatorial materials library. We agree with the
Examiner that the subject matter of claim 1 would have been obvious to one
skilled in the art at the time the invention was made. Moini teaches the
formation of "composite samples using one or more coatings in the form of
continuous concentration gradients placed on the surface of a substrate."
FF 1. Moini applies the coating to a substrate using a carrier which
comprises a solvent and a polymer. FF3. The coating can also contain
inorganic materials such as metal oxides. FF5. Moini also teaches that after
the coating is applied to the substrate, the solvent is removed by heating the
coated substrate. FF6. Therefore, we agree with the Examiner's conclusion
of obviousness. See Final Act 6-7.
Appellant argues that there is no motivation to use the teachings of
Moini with respect to discrete gradients in the creation of continuous
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Appeal2014-009981
Application 11/893,597
gradients. Appeal Br. 3--4. Specifically, Appellant argues that Moini
teaches the use of polymers only in the context of discrete gradients formed
using screen printing as opposed to spray printing used to make continuous
gradients. Id. Appellant argues that one skilled in the art would not use a
viscous fluid in spray applications, hence they would not use the fluids for
discrete gradients to make a continuous gradient. Id. We are unpersuaded.
As the Examiner has found, Moini teaches only one type of coating and
states that the coatings can be used to form continuous gradients. Ans. 9.
Moini teaches that continuous gradients can be formed by any number of
techniques including "screen printing techniques." Moini
i-f 22. We agree with the Examiner that one skilled in the art would have
been motivated to use the coating composition disclosed in Moini for both
discrete and continuous gradients. Ans. 11.
Appellant argues that the only examples in Moini relate to discrete
gradients and that the Examiner's position that Figure 8 discloses a
continuous gradient is in error. Appeal Br. 6. We remain unpersuaded. As
discussed above, Moini clearly teaches all of the elements of claim 1. FF 1-
6. That the examples may be limited to a different embodiment is irrelevant.
Conclusion of Law
We conclude that the Examiner has established by a preponderance of
the evidence that claim 1 would have been obvious over Moini as defined by
35 U.S.C. § 103(a).
Claims 2-6 and 17-21 have not been argued separately and therefore
fall with claim 1.
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Appeal2014-009981
Application 11/893,597
SUMMARY
We affirm the rejection of claims 1---6 and 17-21.
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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