Ex Parte Lopez Quintela et al

Patent Trial and Appeal Board

Feb 29, 2016

11997859 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111997,859
76808 7590
Leason Ellis LLP
One Barker A venue
Fifth Floor
FILING DATE
09/26/2008
03/02/2016
White Plains, NY 10601-1526
FIRST NAMED INVENTOR
Manuel Arturo Lopez Quintela
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.
035041001362-USO 1388
EXAMINER
ARNOLD, ERNST V
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
uspto@leasonellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANUEL ARTURO LOPEZ QUINTELA and
JOSE RIV AS REY1
Appeal2013-002042
Application 11/997 ,859
Technology Center 1600
Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to atomic
quantum clusters having more than 2 and less than 27 metal atoms. The
Examiner rejects the claims as anticipated. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
1 According to Appellants, the Real Party in Interest is Universidade de
Santiago de Compostela. (Br. 3.)
Appeal2013-002042
Application 11/997 ,859
STATEMENT OF THE CASE
Claims 33-36 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief. Claim 33 is representative of the claims on
appeal, and reads as follows:
33. Isolated stable atomic quantum clusters, AQCs,
characterized in that they consist of more than 2 and less than
27 metal atoms and are not in gas phase.
Appellants seek review of the Examiner's rejection of claims 33-36
under 35 U.S.C. § 102(b) as being anticipated by Deutsch.2
The Examiner takes the position that "the metal clusters of Deutsch do
not require ligands and therefore meet the [claim] limitation of 'consist of."
(Ans. 2.) The Examiner's position is that "Deutsch clearly directs the artisan
to various metal atom clusters that may include coordinating ions, thus
allowing for the condition where coordinating ions are not present, each of
which must be synthesized and isolated. If the cluster can by synthesized
and isolated then it is stable for use." (Ans. 5.)
Appellants contend that "the clusters of Deutsch are not made of
atoms but ions which are only stable when surrounded by ligands." (Br. 12.)
The issue is: "[W]hether or not Deutsch fairly discloses metal clusters
without coordinating ligands." (Ans. 6.)
Findings of Fact
FF 1. Deutsch discloses "heavy metal clusters which may be complexed
with appropriate ligand groups, for use as X-ray contrast media."
(Deutsch 1: 12-14 (emphasis added).)
2 Deutsch et al., US 5,417,958, issued May 23, 1995.
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Application 11/997 ,859
FF2. Deutsch discloses that "[t]he cluster may be composed of 2 to 8 metal
atoms of the same or different heavy metal elements, which are held
together at least in part by bonding between the metal atoms."
(Deutsch 2: 29-33.) Particularly useful metals include Au and Ag.
(See Deutsch 2: 38--40.)
FF3. Deutsch discloses:
The metal clusters may be in any formation which will
facilitate bonding to appropriate ligands and impart imaging
characteristics upon complexation. Examples of cluster
configurations include the following.
M=M=M.. M:' /M~ f ...... tt·
M M:-M
wherein M represents the heavy metal element.
Other ions may be included in the cluster formulation,
including such ions as:
0 2-, s2-, c1-, p-, Br-, I-, acetate, or carboxylate[.] These
ions may or may not be directly coordinated to the metal ions in
the cluster.
(Deutsch 2: 46----63, see also claim 1; see also Ans. 5.)
FF4. Deutsch discloses:
The agents according to the present invention may be
made using ordinary process techniques and methods. In
particular, the agents according to the present invention may be
produced by synthesis of an appropriate metal cluster
precursor and by substitution of appropriate ligands in the final
step of synthesis. In an alternative, the agents according to the
present invention may be formed by direct synthesis from
standard starting materials, wherein the final cluster compound
is formed without benefit of an isolated intermediate. The
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Application 11/997 ,859
agents according to the present invention may be used in the
customary manner as X-ray contrast imaging agents, by
practicing established techniques and procedures.
(Deutsch 5: 50-62 (emphasis added); see also Ans. 5.)
FF5. The Burst Declaration3 explains that one of ordinary skill in the art
would understand "[ s ]ubstitution, as used both in the chemical
literature and in general, indicates unequivocally that there is a
replacement of one by another." (Burst Dec. i-f 11.)
Principle of Law
A prima facie case can be rebutted by evidence showing that the prior
art products do not necessarily possess the characteristics of the claimed
product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See also Titanium
Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985)
It is well settled that inherency "may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (internal quotation marks omitted).
Analysis
The Examiner finds that the claims under examination are directed to
a composition consisting of atomic quantum clusters and not a method of
making them. (See Ans. 3; see also Br. 5 ("the AQCs contain metal atoms
and nothing else, including stabilizing ligands").) We agree with the
Examiner's position that the claims are directed to a product.
3 Declaration by Dr. Mathias Burst signed Dec. 2, 2011.
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Claim 33 uses the term "consist of" which is analogous to the
transitional phrase "consisting of' that excludes any element, step, or
ingredient not specified in the claim. In re Gray, 53 F.2d 520, (CCPA 1931);
Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("consisting of' defined
as "closing the claim to the inclusion of materials other than those recited
except for impurities ordinarily associated therewith"). Because you cannot
have half of a metal atom the limitation of "more than 2" is interpreted to be
at least 3 metal atoms while the limitation of "less than 27" is interpreted to
be 26 metal atoms or fewer. Accordingly, claim 33 is directed to a product
consisting of stable atomic clusters having 3 to 26 metal atoms.
"[T]he Examiner's position [is] that Deutsch discloses metal clusters
that are not only bound to ligands but also [includes] metal clusters that are
free of ligands." (Ans. 2.) The Examiner finds "that Deutsch purposefully
draws the metal clusters devoid of coordinating ligands. Also note that
Deutsch states that the metal cluster may include other ions thus clearly
contemplating metal clusters without other ions and situations where even if
present the other ions may not even coordinate to the cluster!" (Ans. 5; see
also FF3.) Based on the drawings, the Examiner reasons that Deutsch is in
possession of "'isolated stable" atomic quantum clusters because before the
ligands are added to the metal cluster Deutsch ... [is] in possession of the
'metal cluster precursor' which is the instantly claimed isolated stable
atomic quantum cluster." (Final Act. 4.) "[T]he permissive language 'may'
includes conditions where such ions are not present and thus the cluster is
not always bonded to or complexed to a ligand as shown diagrammatically."
(Ans. 6.)
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Application 11/997 ,859
Appellants contend that "Deutsch does not consist of between 2 and 8
heavy metal atoms, because it is always bonded to or complexed to ... [at
least one] ligand." (Br. 13.) Appellants contend that the Examiner's
reliance on Deutsch's precursor clusters as anticipating the claimed AQCs in
is in error because these precursor clusters are not isolated, stable, and
between 2 and 8 heavy metal atoms (see Br. 11 ).
We find that on this record Appellants have the better position. As
noted by the Examiner the term "may" is a permissive term that is used to
express a possibility or probability. In order to anticipate, the claimed
limitations must unavoidably be present in the art. In the present case, the
Examiner relies on the drawings to establish that Deutsch was in possession
of the claimed AQCs (see FF3). We find that the reliance on the drawing
alone is not sufficient to establish that these clusters were known in Deutsch
to be present without a ligand. Drawings in chemistry do not always convey
all the molecules that are attached to a core, as in this case where the core is
a metal. Furthermore, we note that Deutsch uses these same cluster
drawings in the claims. The language associated with the claim, however,
conveys that "one or more coordinating ligands" are present on these
clusters even though the ligand is not shown in the drawing (see Deutsch,
claim 1 ). Because only one ligand needs to be attached to the cluster it
would be burdensome to indicate all the possible clusters with all possible
positions for the associated ligand.
The Burst Declaration supports this understanding in the chemical
arts. The Burst Declaration explains that, "as common in the chemical
literature, [the at least one ligand is] not included in all drawings of the
various possible arrangements of metal atoms." (Burst Dec. i-f 8.) Thus, the
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use of shorthand drawings that do not show the associated ligand does not
establish that the clusters necessarily lack ligands.
The Examiner contends "that the metal cluster may include other ions
thus clearly contemplating metal clusters without other ions and situations
where even if present the other ions may not even coordinate to the cluster!"
(See Ans. 5.) We are not persuaded by the Examiner's interpretation that the
possibility of an ion not coordinating into a cluster is evidence that the metal
clusters are necessarily isolated and stable. (See Id.)
The portion of Deutsch relied on by the Examiner recites that "[t]hese
ions [such as 0 2-, s2-, c1-, p-, Br-, r-, acetate, or carboxylate] may or may not
be directly coordinated to the metal ions in the cluster." (FF3 (emphasis
added).) In this context, the recited ion ligands can be directly coordinated
with a metal cluster. However, the recited ions 0 2-, s2-, c1-, p-, Br-, r-,
acetate, or carboxylate in Deutsch (FF3) are not the only ligands
contemplated in the reference. Here, Deutsch teaches other ligands that
incorporate for example 0 and S, and these ions are part of a larger ligand
structure (see Deutsch 3 and 4). Deutsch discloses that a ligand that can
comprise "from 1 to 8 atoms which bond to the cluster, with a number of
supporting atoms making up the framework of the ligand" (Deutsch 2: 16-
23). These larger ligands also bind metal clusters. Binding of a larger
ligand to a metal cluster would mean that the 0 and S ions contained in the
larger ligand would not be directly attached to the metal ion but instead
would be indirectly attached due to intervening atoms. Thus, the Examiner's
reliance on this section of Deutsch is not sufficiently persuasive to establish
that Deutsch necessarily discloses metal clusters that are not associated with
a ligand.
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Appellants contend that Deutsch's agents "'may be produced by
synthesis of an appropriate metal cluster precursor and by substitution of
appropriate ligands' ... [T]he proper reading of the term 'substitution' in
this passage can only be understood as to show that the metal cluster
precursor is always coordinated with a ligand, and that this ligand can be
substituted by a different ligand." (Br. 13.)
"[T]he Examiner's position is that the permissive term 'may' does not
require the presence of an ion to be substituted with a ligand. Certainly in
situations where an ion may be coordinated to the metal ions, it can be
substituted with a ligand. However, Deutsch also contemplates a situation
where ions are present but not coordinated to the metal cluster." (Ans. 6.)
As explained above, we are not persuaded by the Examiner's position
that Deutsch's recitation that "[t]hese ions may or may not be directly
coordinated to the metal ions in the cluster" (see FF3) establishes that the
metal clusters are necessarily present without ligands. The Examiner's
interpretation that the use of the permissive term may in the context of the
Deutsch reference indicates that clusters without ligands (ions) are
contemplated (see Ans. 5Error! Reference source not found.) is not
persuasive especially when viewed in the context of the entire Deutsch
document. We agree with Appellants' position that with respect to the
production of the clusters as disclosed in Deutsch the "substitution of
appropriate ligands in the final step of synthesis" (see FF4) reasonably
conveys that one ligand is substituted for another. Appellants contend that
"[t]he term 'substitution' would mean unequivocally that there is a
replacement of one thing by another." (Br. 13.) This position is also
supported by the Burst Declaration that explains that one of ordinary skill in
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the art would understand "[s]ubstitution, as used both in the chemical
literature and in general, indicates unequivocally that there is a replacement
of one by another." (FF5.)
In sum, as we are not persuaded, for the reasons discussed, that the
Examiner has adequately explained how Deutsch describes, within the
meaning of 35 U.S.C. § 102(b ), atomic quantum clusters having the features
required by claim 33, we reverse the Examiner's anticipation rejection of
that claim, and their dependents, over Deutsch.
SUMMARY
We reverse the rejection of claims 33-36 under 35 U.S.C. § 102(b) by
Deutsch.
REVERSED
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