Ex Parte Lynch et al

Patent Trial and Appeal Board

Nov 28, 2017

13314232 (P.T.A.B. Nov. 28, 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.
13/314,232 12/08/2011 Doreen C. Lynch 95167 8636
70523 7590
Carestream Health, Inc.
ATTN: Patent Legal Staff
150 Verona Street
Rochester, NY 14608
11/29/2017 EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
11/29/2017 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 DOREEN C. LYNCH and JUNPING ZHANG1
Appeal 2016-004190
Application 13/314,232
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—8 and 10—13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of preparing metal
nanowires. E.g., Claim 1. Claim 1 is reproduced below from page 12
(Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is Carestream Health,
Inc. Br. 1.
Appeal 2016-004190
Application 13/314,232
1. A method comprising:
selecting at least one product geometrical parameter;
providing at least one first composition comprising a first
number of moles of at least one first reducible metal ion;
providing at least one second composition comprising a second
number of moles of at least one second metal or metal ion,
wherein the at least one first reducible metal ion and the at least
one second metal or metal ion have the same atomic number; and
reducing at least some of the first number of moles of the at least
one first reducible metal ion to at least one first metal nanowire
in the presence of the second number of moles of the at least one
metal or metal ion,
wherein the ratio of the second number of moles to the first
number of moles is specified based upon the at least one product
geometrical parameter, and
further wherein the at least one product geometrical parameter
comprises a nanowire length or at least one first function of the
nanowire length.
ANALYSIS
Claims 1—8 and 10—13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yugang Sun et al., Uniform Silver Nanowires Synthesis by
Reducing AgNO 3 with Ethylene Glycol in the Presence of Seeds and
Poly (Vinyl Pyrrolidone), 14 Chem. Mater. 4736 (2002). The Appellants
argue the claims as a group. See Br. 2. We select claim 1 as representative,
and we limit our discussion to claim 1. After review of the cited evidence in
the appeal record and the opposing positions of the Appellants and the
Examiner, we determine that the Appellants have not identified reversible
error in the Examiner’s rejection. Accordingly, we affirm the rejection for
reasons set forth below, in the Final Action, and in the Examiner’s Answer.
See generally Final Act. 2—5; Ans. 2—6.
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Appeal 2016-004190
Application 13/314,232
The Examiner finds that Sun teaches a method of making silver
nanowires, and that a difference between the method of Sun and the method
of claim 1 is that Sun “do[es] not expressly teach the claimed ratio between
the first and second molar amount is based on a product geometrical
parameter.” Ans. 2. However, the Examiner determines that Sun teaches
that “the concentration of AgNCE (second molar amount) affects the length
and the shape of the final product” and that “the concentration of the second
molar amount of AgNCE is a result effective variable ... as well as the ratio
between the first and second molar amount, since such ratio depends on the
concentration of the second molar amount of AgNCE.” Id. at 2—3. The
Examiner concludes that “[i]t would have been obvious ... to have
optimized the ratio between the first and second amount based on the desired
length, diameter, and/or volume of the obtained product, including the
claimed ratios ... in order to obtain a product with desired length, diameter
and/or volume.” Id.
The Appellants argue (1) that Sun “do[es] not recognize the ratio
between the second and first number of moles to be a result effective
variable,” (2) that the Examiner improperly conflates “molar concentration
in the reaction mixture with the number of moles fed to the reactor,” and
(3) that the Examiner improperly conflates “the addition rate of silver nitrate
with the number of moles fed to the reactor.” See Br. 4—11.
We have carefully considered the Appellants’ arguments, but we do
not find them to be persuasive. “A recognition in the prior art that a
property is affected by the variable is sufficient to find the variable result-
effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012). Sun expressly teaches that the “morphology and aspect ratios of. . .
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Application 13/314,232
silver nanostructures could be varied from nanoparticles and nanorods to
long nanowires by adjusting the reaction conditions, including the ratio of
PVP to silver nitrate, reaction temperature, and seeding conditions.” Sun at
4736 (Abstract) (emphases added). A person of ordinary skill in the art
would have recognized that “reaction conditions” include reactant
concentrations, and that reactant concentrations relate directly to the number
of moles of reactants present in a reaction vessel. A person of ordinary skill
also would have understood that, if the number of moles of either the first or
the second composition changes, then the ratio of the second number of
moles to the first number of moles necessarily also changes.
In discussing “seeding conditions,” Sun explicitly teaches that
“[concentration . . . play[s] [a] certain role[]” and is a seeding condition that
is “expected to influence the dimensions of silver nanowires.” Id. at 4743.
If the concentration of the silver seed were changed, as explicitly suggested
by Sun in order “to influence the dimensions of silver nanowires,” while
holding other reaction conditions constant, that change alone would result in
a change in the molar ratio of the first number of moles to the second
number of moles, as claimed. A person of ordinary skill would have
understood that “nanowire length,” as recited by claim 1, is a “dimension” as
the term “dimensions” is used by Sun. See Sun at 4743. Thus, a person of
ordinary skill in the art reasonably would have understood from Sun that
seed concentration, and by extension the number of moles of seed present, is
a result-effective variable that affects nanowire dimensions such as length.
Additionally, Sun explicitly teaches that the “length and number of
the nano wires” produced by Sun’s method are influenced by the “injection
rate” of AgNCA to the reaction vessel. Sun at 4744. The Appellants’
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Application 13/314,232
argument that Sun does not teach that injection rate affects length, see
Br. 10, is unpersuasive because the portion of Sun relied on by the
Appellants says nothing about nanowire dimensions and states only that two
particular examples2 had an approximately equal amount of nanowires and
colloidal particles, see Sun at 4738 (Table I). Additionally, as noted above,
Sun plainly teaches that “injection rate” influences “[t]he length and number
of the nanowires.” Id. at 4744 (“The length and number of the nanowires
would decrease if the injection rate was further lowered.”).
Although the Appellants argue that injection rate does not correspond
to the “number of moles” recited by claim 1, see Br. 10—11, that argument
does not establish reversible error in the rejection. A person of ordinary skill
would have understood that a faster injection rate would result in a greater
total number of moles of reactant, after a set period of time, than a slower
injection rate. The Appellants argue that “[ajdding a mole of substance over
a five minute interval or over a ten minute interval (a factor of two
difference in rates) does not change the number of moles charged in the
least.” Id. We are not persuaded by that hypothetical. At the five minute
mark of the Appellants’ hypothetical, the first scenario (five minute interval)
has a mole of substance present, whereas the second scenario (10 minute
interval) has only half a mole of substance present. Thus, injection rate is
relevant to the number of moles of a substance present in the reaction vessel.
On this record, considering the teachings of Sun as a whole, we are
persuaded (1) that a person of ordinary skill in the art, through the use of
only ordinary creativity, reasonably would have understood Sun to teach or
2 The Appellants reference sample numbers AG04 and AG38. See Br. 10.
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Application 13/314,232
suggest that reaction conditions, including the number of moles (and,
consequently, the molar ratio) of AgNCA and silver seed material (i.e., the
first and second molar amounts), influence physical properties of the
produced nanowire, including length, and (2) that a person of ordinary skill
in the art would have been motivated to vary the reaction conditions,
including the number of moles of reactants, to achieve desired nanowire
physical properties, including length. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418—19 (2007) (“[T]he [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 in the art would employ”).
Accordingly, we affirm the rejection.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—8 and 10—13.
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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