Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardNov 28, 201713562104 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 13/562,104 07/30/2012 Shuhua LIU 9322P005 9055 8791 7590 11/30/2017 BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER BURKHART, ELIZABETH A ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): FIP_Group @bstz. com PTO.MAIL@BSTZPTO.COM PTO.MAIL@BSTZ.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHUHUA LIU, KWOK WEI SHAH, MICHELLE LOW, ZHI WEI SEH, MING-YONG HAN, KAUSTABH KUMAR MAITI, KIAT SENG JASON SOH, DINISH UNNIMADHAVA KURUP SOUDAMINI AMMA, MALINI OLIVO, and YOUNG-TAE CHANG Appeal 2017-001568 Application 13/5 62,1041 Technology Center 1700 Before JAMES C. HOUSEL, WESLEY B. DERRICK, and AVELYN M. ROSS, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection under 35 U.S.C. § 103(a) of claims 1-9 and 16-20 over Nie2 3in view of Lee 1 Appellants identify Agency for Science, Technology and Research (“ASTAR”), an agency of Singapore, as the real party in interest. Appeal Br. 3. 2 Nie et al., US 2009/0140206 Al, published June 4, 2009. 3 Lee et al., US 7,982,870 B2, issued July 19, 2011. Appeal 2017-001568 Application 13/562,104 and Wiesner,4 and of claims 10-15 in further view of Natan5 and Kawai.6 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. THE INVENTION The subject matter of the claims on appeal relates to a method for preparing a surface enhanced Raman spectroscopy (SERS) particle, which includes “the step of encapsulating a plurality of Raman molecules on the surface of a metallic core ... at an elevated temperature selected to decrease the encapsulation time . . . relative to an encapsulation performed at 20°C.” Specification filed July 30, 2012 (“Spec.”), Abstract. Claim 1—the sole independent claim—is reproduced below. 1 A method of preparing a surface enhanced Raman spectroscopy (SERS) particle comprising the step of encapsulating a plurality of Raman molecules on the surface of a metallic core with a biocompatible protective shell at an elevated temperature selected to decrease the encapsulation time more than one-fold relative to an encapsulation performed at 20°C. Appeal Brief filed March 22, 2016 (“Appeal Br.”), 23 (Claims Appendix). DISCUSSION7 We have reviewed the grounds of rejection set forth by the Examiner, Appellants’ arguments and proffered evidence, and the Examiner’s response. 4 Wiesner et al., WO 2010/121064 A2, published October 21, 2010. 5 Natan, US 2003/0166297 Al, published September 4, 2003. 6 Kawai et al., US 2011/0197787 Al, published August 18, 2011. 7 In this discussion, we refer to the Specification, the Final Office Action dated June 24, 2015 (“Final Act.”), the Appeal Brief, and the Examiner’s Answer issued August 30, 2016 (“Ans.”). 2 Appeal 2017-001568 Application 13/562,104 On this record, we are unpersuaded that the Examiner erred reversibly and we determine that a preponderance of the evidence supports the Examiner’s conclusion of obviousness for the reasons expressed by the Examiner in the Final Office Action and the Examiner’s Answer. We give claim terms the broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). It is well established that “the PTO must give claims their broadest reasonable interpretation consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. Having considered the language of the claims, and the Specification, we determine claim 1 to require: (1) an encapsulation at a temperature greater than 20°C; and (2) that the encapsulation at a temperature greater than 20°C requires less time than a reference encapsulation at 20°C. We do not, however, determine the language to constrain the encapsulation at a temperature greater than 20°C, i.e., “at an elevated temperature,” to otherwise be the same as the encapsulation at 20°C. Specifically, “the step of encapsulating . . . selected to decrease the encapsulation time” is reasonably interpreted to refer to selection of the step of encapsulating, in its entirety, rather than merely selection of an elevated temperature. The Examiner’s rejections are effectively grounded on the proper, broadest reasonable interpretation discussed above and substitute Wiesner’s 3 Appeal 2017-001568 Application 13/562,104 elevated temperature process for the lower temperature processes of Nie or Lee. See, e.g., Final Act. 3; Ans. 3—4, 5-6. Rejection over Nie in view of Lee and Wiesner The Examiner relies on Nie for teaching a method of preparing an SERS particle comprising encapsulating Raman molecules on the surface of a metallic core with a silica shell formed by use of a coupling agent and sodium silicate over a period of 48 hours. Ans. 2 (citing Nie Tflf 21-22, 27, 48). The Examiner relies on Lee for its disclosure of a silica shell formed at room temperature by use of a coupling agent and sodium silicate over a period of 48 hours to form a shell thickness of about 15 nm. Ans. 3 (citing Lee col. 5,11. 15-20, col. 6,11. 1-5). The Examiner relies on Wiesner for its disclosure of a method of forming core-shell nanoparticles with a dense silica shell, wherein the silica shell is formed at an elevated temperature of at least 50°C over a period of 1-24 hours for improved stability, including a shell of about 15 nm thickness formed over a period of about 15 hours. Ans. 3 (citing Wiesner || 22, 37, 50, Fig. 1). Reasoning that the elevated temperature process of Wiesner has a shorter encapsulation time than the room temperature encapsulation of Lee (and similarly Nie), the Examiner de facto concludes it would have been obvious for one of ordinary skill in the art at the time of the invention to have used the encapsulation method of Wiesner instead of the room temperature encapsulation process of Nie for the benefit of, inter alia, faster encapsulation. Ans. 3—4. 4 Appeal 2017-001568 Application 13/562,104 Appellants proffer various contentions of error grounded on claim 1 requiring the step of encapsulation at elevated temperature to otherwise be identical to that at 20°C. Appeal Br. 10-13, 16-17. Because the claim does not require the encapsulation process to be otherwise identical, as discussed above, the arguments are without persuasive merit.8 In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“The invention disclosed in Hiniker’s written description may be outstanding in its field, but the name of the game is the claim.”). Appellants also contend error grounded on the Examiner neglecting the fact that the process, and product, of Nie or Lee differs from that of Wiesner. Appeal Br. 13-15. As to the material to be encapsulated, Appellants highlight that Wiesner forms a silica core with embedded fluorescent dye and contrasts that with the gold colloid labeled with a Raman reporter in Nie, and with the silica core particle with embedded silver nanoparticles labeled with a Raman tagging material in Lee. Appeal Br. 14. Similarly, Appellants contend differences in the resultant particles on the basis of the different cores, and that “[t]he particle of Wiesner does not have a metallic core and ... is not directed to SERS nanoparticles at all.” Appeal Br. 14. As to the method of encapsulation, Appellants highlight the use of 8 In the event of further prosecution, and of amendment to limit the claims to require the encapsulation at elevated temperature to otherwise be identical, we comment here to highlight the observation by Appellants that “Wiesner clearly and unambiguously shows that an elevated temperature increases the encapsulation time.” Appeal Br. 12—13. Further, we note the breadth of the recited “biocompatible protective shelf’ (claim 1) and that in determining whether the enablement requirement is met, the Examiner should weigh, among other factors, both the breadth of the claims and the level of predictability in the art. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). 5 Appeal 2017-001568 Application 13/562,104 TEOS in Wiesner, without contesting that its use forms a silica shell, and contrasts this to the use of sodium silicate in Nie to form a silica shell and the use of TEOS and sodium silicate in Lee to form a silica shell. Appeal Br. 14. Further, due to the differences in the particle cores’ structures, Appellants contend differences in chemistry such that “one of ordinary skill in the art would not understand how to combine the references to arrive at the claimed combination of elements.” Appeal Br. 15. On this record, we find Appellants’ arguments unpersuasive of reversible error because they fail to address the rejection as set forth by the Examiner in which Wiesner is relied on for its encapsulation process to form a silica shell, not for its silica core with embedded fluorescent dye. “Non obviousness cannot be established by attacking the references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); See also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . . what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Further, as to differences in the encapsulation step to form a silica shell, these are without import because there is no persuasive evidence that Wiesner’s process using TEOS that has not been conjugated with dye to form a silica shell does not similarly form a silica shell on a SERS particle, or that one of skill in the art would not expect it to do so. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument. . . cannot take the place of evidence.”). Appellants also contend that Nie teaches encapsulation should be carried out as slowly as possible and that, accordingly, one of ordinary skill 6 Appeal 2017-001568 Application 13/562,104 in the art would not understand to combine the references to arrive at the claimed combination. Appeal Br. 15 (citing Nig 149). Appellants’ nascent argument is unpersuasive of reversible error because it fails to establish any reason why one of ordinary skill in the art would not combine the references or that there is any teaching away from using the more rapid encapsulation process of Wiesner. “We will not read into a reference a teaching away from a process where no such language exists.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). “A reference does not teach away ... if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotingIn re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Appellants separately argue claim 7, which requires a greater decrease in the encapsulation time, but the proffered arguments are unpersuasive because they are grounded on the claim requiring the step of encapsulation at elevated temperature to otherwise be identical to that at 20°C and on Nie’s teaching that slow growth is desired (Appeal Br. 17-18), both of which are discussed above. Appellants separately argue claim 9, which requires a “step of increasing the thickness of said biocompatible protective shell,” on the basis that “Wiesner is not concerned with increasing a thickness of the coating” and that “one of ordinary skill in the art would not understand to combine and/or modify the references to arrive at the claimed combination of elements.” Appeal Br. 18. 7 Appeal 2017-001568 Application 13/562,104 Appellants’ arguments are not persuasive of reversible error because they fail to address the rejection as set forth by the Examiner, as Nie discloses increasing the thickness of the silica shell after formation of an initial silica shell. Further, Appellants’ arguments fail to “take account of the inferences and creative steps that a person of ordinary skill in the art would employ” in overcoming the difficulties within their level of skill. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Rejection over Nie in view of Lee, Wiesner, Natan, and Kawai Claim 10, and claims 11-15 dependent thereon, require—by dependency from claim 9—that “the step of increasing the thickness of said biocompatible protective shell” (claim 9) “comprises the step of adding an aqueous solution of a coating precursor under alkaline conditions” (claim 10). The Examiner relies on Natan for its disclosure “that additional growth of silica shell may comprise adding a coating precursor, TEOS, with ammonia under alkaline conditions.” Ans. 5 (citing Natan ^[90-91). The Examiner relies on Kawai for its disclosure that “a silica shell may be formed using an aqueous solution . . . comprising TEOS . . . and ammonia ... for hydrolysis of the [TEOS] alkoxysilane.” Ans. 5 (citing Kawai ^fl[ 54-55, 58). The Examiner further relies on Kawai for disclosing an aqueous solution substantially free of alcohol for hydrolysis of the alkoxysilane in its disclosure of using water in an amount of 5-100%. Ans. 5 (citing Kawai 1 54). 8 Appeal 2017-001568 Application 13/562,104 The Examiner concludes that It would have been obvious to one of ordinary skill in the art at the time of the invention by applicant to increase the thickness of the silica shell of Nie using the process Natan since it was a suitable method for increasing thickness of the shell and an aqueous solution performs hydrolysis of the alkoxysilane as evidenced by Kawai. Ans. 5. Appellants contend that “neither Natan nor Kawai states that an aqueous solution of the coating precursor is added to increase the thickness of the shell.” Appeal Br. 20. Appellants contend that Natan uses “the classic Stober process ... (in which a large amount of alcohol is required)” and that this stands in contrast to the process used in the Specification which uses “a pure aqueous solution.” Appeal Br. 20 (citing Spec. 14,11. 24-26). Appellants further contend Natan’s precursor to thicken the shell differs from that in the Specification. Appeal Br. 20. Appellants further cite to paragraphs 90-91 of Natan for disclosing use of an alcoholic solution and contend “Natan teaches that an alcoholic solution must be used to increase the thickness of the silica shell.” Appeal Br. 20-21. Appellants contend Kawai is not directed to thickening a shell, but rather to making a shell dense, particularly by heating, and that Kawai “requires the shell to be as thin as possible.” Appeal Br. 21 (citing Kawai 1125, 38, 88). Appellants further contend that “it is clear that the shell of Kawai is densified and not thickened because the silica precursor was already used up during the shell formation process.” Appeal Br. 21; Kawai 188. 9 Appeal 2017-001568 Application 13/562,104 Appellants’ arguments are not persuasive of reversible error. As highlighted by the Examiner (Ans. 11), the claims are broader than Appellants’ example in that claims 10-15 only require that the precursor be a silane compound, such as TEOS disclosed in paragraph 91 of Natan, and that claim 12 is the only claim that excludes alcohol. Further, as set forth by the Examiner, the rejection is grounded on the combination in which Natan is relied on for teaching that a shell can be thickened by use of a solution of coating precursor, ammonia and ethanol under alkali conditions, and Kawai is relied on for teaching that water is a suitable alternative to alcohol in a process using a solution comprising TEOS, ammonia, and water or alcohol, such that alcohol is not required. Ans. 11 (citing Natan || 90-91; Kawai 53-55, 58). As expressed by the Examiner, “[although Kawai relates to formation of the initial shell, it is still disclosed that a silica shell can be formed using the same solution,” but using water “as an alternative dispersion medium to the ethanol” used in Natan. Ans. 11-12. As to Appellants’ contention that “Natan teaches that an alcoholic solution must be used to increase the thickness of the silica shell” (Appeal Br. 21), on this record, we find it lacks sufficient support to overcome the Examiner’s reasoning grounded on Kawai’s teaching of solutions for depositing silica that omit alcohol (Ans. 11). See, e.g., Pearson, 494 F.2d at 1405. Further, we are apprised of no error because, as properly applied, “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill would employ.” KSR, 550 U.S. at 418. 10 Appeal 2017-001568 Application 13/562,104 On balance, the evidence of record weighs most heavily in favor of the Examiner’s conclusion of obviousness of claims 1-20. DECISION The Examiner’s decision rejecting claims 1-20 is 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)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation