Ex Parte Naasani et al

Patent Trial and Appeal Board

May 22, 2018

13900388 (P.T.A.B. May. 22, 2018)

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.).
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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
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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.
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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
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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
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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
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