Ex Parte Naasani et alDownload PDFPatent Trial and Appeal BoardMay 22, 201813900388 (P.T.A.B. May. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/900,388 05/22/2013 15971 7590 05/24/2018 Nanoco c/o Blank Rome LLP 717 Texas Avenue, Suite 1400 Houston, TX 77002 FIRST NAMED INVENTOR Imad Naasani 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. 038-0060US 1357 EXAMINER SNOW, COLLEEN ERIN ART UNIT PAPER NUMBER 2899 NOTIFICATION DATE DELIVERY MODE 05/24/2018 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): houstonpatents@blankrome.com dcooley@blankrome.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte IMAD NAASANI and HAO PANG Appeal2017-007862 Application 13/900,388 Technology Center 2800 Before BRADLEY R. GARRIS, DONNA M. PRAISS, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 22-25. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 In this Decision, we refer to the Specification filed May 22, 2013 ("Spec."), the Final Office Action dated May 27, 2016 ("Final Act."), the Advisory Action dated August 9, 2016 ("Adv. Act."), the Appeal Brief filed August 28, 2016 ("Br."), and the Examiner's Answer dated November 15, 2016 ("Ans."). 2 Appellant is the Applicant, Nanoco Technologies, Ltd., which, according to the Appeal Brief, is the real party in interest. Br. 3. Appeal2017-007862 Application 13/900,388 The subject matter of the claims on appeal relates to a composition that includes quantum dots and particles of barium sulfate suspended or embedded in a matrix material, such as a polymeric material. Spec. i-f 18. Independent claims 22-25, reproduced below from the Claims Appendix of the Appeal Brief, are illustrative of the claims on appeal. 22. A composition comprising: a population of core/shell quantum dots having a core comprising InP and a shell comprising ZnS and particles of barium sulfate suspended in an acrylate resin wherein the external quantum efficiency of the composition is greater than that of an otherwise identical composition that has no particles of barium sulfate. 23. A composition comprising: a population of core/shell quantum dots having a core comprising InP and a shell comprising ZnS and particles of barium sulfate suspended in an acrylate resin wherein a photoluminescence wavelength of the composition is shorter than that of an otherwise identical composition that has no particles of barium sulfate. 24. A composition comprising: a population of core/shell quantum dots having a core comprising InP and a shell comprising ZnS and particles of barium sulfate suspended in an acrylate resin wherein the full width at half maximum of a photoluminescence emission peak of the composition is less than that of an otherwise identical composition that has no particles of barium sulfate. 25. A composition comprising: a population of core/shell quantum dots having a core comprising InP and a shell comprising ZnS and particles of barium sulfate suspended in an acrylate resin wherein the quantum yield of the composition is greater than that of an otherwise identical composition that has no particles of barium sulfate. Br. 19 (Claims App.). 2 Appeal2017-007862 Application 13/900,388 DISCUSSION The Examiner maintains the rejection of claims 22-25 under pre-AIA 35 U.S.C. § 102(e) over Breen et al. (US 2015/0171268 Al, published June 18, 2015) ("Breen"). Final Act. 2-3. We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("it has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After considering evidence on this record and each of Appellant's contentions, we are not persuaded that Appellant identifies reversible error in the Examiner's § 102( e) rejection. Thus, we affirm the Examiner's rejection for the reasons expressed in the Final Office Action, the Answer, and below. The Examiner finds that Breen discloses a composition comprising a population of core/shell quantum dots having a core comprising InP, a shell comprising ZnS, and particles of barium sulfate suspended in acrylate resin as required by each of independent claims 22-25. Final Act. 2 (citing Breen iii! 90, 92, 152, 182). The Examiner acknowledges that Breen does not specify that the external quantum efficiency of its composition is greater than that of an otherwise identical composition that has no particles of barium sulfate (claim 22), that the photoluminescence wavelength of its composition is shorter than that of an otherwise identical composition that has no particles of barium sulfate (claim 23), that the full width at half maximum of photoluminescence emission peak of its composition is less than that of an 3 Appeal2017-007862 Application 13/900,388 otherwise identical composition that has no particles of barium sulfate (claim 24), or that the quantum yield of its composition is greater than that of an otherwise identical composition that has no particles of barium sulfate (claim 25). Final Act. 2-3. The Examiner finds that Appellant's Specification teaches that the claimed properties (i.e., the external quantum efficiency, the photoluminescence wavelength, the full width at half maximum of photoluminescence emission peak, and the quantum yield) are a result of simply adding barium sulfate to InP /ZnS quantum dots in an acrylate resin. Final Act. 3; Ans. 2; Spec. i-fi-1 65---66. Therefore, the Examiner finds that any composition comprising InP/ZnS core/shell quantum dots in an acrylate resin to which barium sulfate has been added, such as a composition disclosed by Breen, reasonably would have been expected to have the claimed properties, regardless of whether the properties were recognized in Breen. Final Act. 3. Appellant argues that Breen's broad and generic disclosure, which includes thirty-seven different core and shell materials, sixteen host materials, and seven scattering materials, is not sufficiently enabling to serve as a valid anticipatory reference of the claimed subject matter. Br. 11-15. Appellant contends that undue experimentation would be required for one of ordinary skill in the art to reach the claimed composition that includes particles of barium sulfate suspended in an acrylate resin and has an external quantum efficiency, photoluminescence wavelength, full width at half maximum of a photoluminescence emission peak, and quantum yield greater than an identical composition that has no particles of barium sulfate. Id. at 15. 4 Appeal2017-007862 Application 13/900,388 Appellant's arguments are not persuasive of reversible error. A prior art patent is presumed to be enabled. See, e.g., In re Antor Media Corp., 689 F.3d 1282, 1287-88 (Fed. Cir. 2012). Appellant asserts that Breen is non- enabling, and would require undue experimentation to reach the claimed subject matter. Br. 15-16. Appellant, however, does not provide sufficient factual evidence to support those arguments. An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, some experimentation, even a considerable amount, is not "undue" if, e.g., it is merely routine, or if the specification provides a reasonable amount of guidance as to the direction in which the experimentation should proceed. Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (citing In re Jackson, 217 USPQ 804, 807 (Bd. App. 1982)). On this record, Appellant has not shown that it would have required more than routine experimentation to select core, shell, host, and scattering materials to make a composition based on Breen's disclosure that meets the requirements of claims 22-25. Accordingly, on this record, a preponderance of the evidence supports the Examiner's finding that Breen's disclosure is enabling. Ans. 3. Appellant argues that Breen does not specifically describe InP /ZnS, core/shell quantum dots. Br. 15. Appellant's argument is not persuasive of reversible error. As Appellant admits, Breen discloses thirty-seven examples of materials suitable for the core (Breen i-f 90), and thirty-seven examples of materials for the shell of its quantum dots (id. i-f 92), with zinc sulfide being a preferred shell material (id. i-fi-136, 92, 110). Br. 12, 15. We are unpersuaded that the categories of core and shell materials in Breen are so large that a quantum 5 Appeal2017-007862 Application 13/900,388 dot having a core comprising InP and a shell comprising ZnS would not be immediately apparent to one of ordinary skill in the art. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301F.2d676, 681 (1962)) ("[A] reference can anticipate a claim even if it 'd[ oes] not expressly spell out' all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would 'at once envisage' the claimed arrangement or combination."); Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1361-62 (Fed. Cir. 2012) (holding that a claim is anticipated by a prior art reference that disclosed a number of different combinations of cooling and flavoring elements). Appellant argues that Breen provides no experimental results which explicitly or inherently disclose that the addition of particles of barium sulfate to a population of core/shell quantum dots having a core comprising InP and a shell comprising ZnS suspended in an acrylate resin increases the external quantum efficiency, shortens the photoluminescence wavelength (i.e., blue shift), decreases the full width at half maximum of a photoluminescence emission peak, and/or increases the quantum yield of the composition. Br. 11. Appellant's argument is unpersuasive. As the Examiner finds, Appellant's Specification teaches that the claimed properties (i.e., the external quantum efficiency, the photoluminescence wavelength, the full width at half maximum of photoluminescence emission peak, and the quantum yield) are a result of simply adding barium sulfate to InP/ZnS quantum dots in an acrylate resin. Final Act. 3; Ans. 2; Spec. i-fi-165-66. The Examiner finds that Breen discloses a composition comprising "a population 6 Appeal2017-007862 Application 13/900,388 of core/shell quantum dots having a core comprising InP and a shell comprising ZnS ... and particles of barium sulfate ... suspended in an acrylate resin," as recited in claims 22-25. Final Act. 2 (internal citations omitted). Appellant does not dispute or identify error in the Examiner's finding. Compare Final Act. 2, with Br. 10-17. As the Examiner correctly points out, Breen need not explicitly disclose that its composition has the claimed properties in order for those properties to exist. Ans. 3. "[A] prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the ... reference." Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). There is no requirement that the prior art must recognize the inherent feature or characteristic. Id. Accordingly, on this record, Appellant's arguments do not identify error in the Examiner's § 102( e) rejection. Thus, we sustain the rejection of claims 22-25 as anticipated over Breen. DECISION For the above reasons, the rejection of claims 22-25 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation