Ex Parte ODownload PDFPatent Trial and Appeal BoardMay 29, 201411897899 (P.T.A.B. May. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHAWN MICHAEL O’MALLEY __________ Appeal 2012-005621 Application 11/897,899 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 21-36. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to processes for making light- polarizing articles that include metal nanorods (Spec. para. [0001]). Appeal 2012-005621 Application 11/897,899 2 Claim 21 is illustrative: 21. A process for making a light-polarizing article comprising: (1) providing a plurality of nanorods produced from the deposition of an elemental metal onto a DNA template polymer; (2) mixing the nanorods with a batch mixture of a glass material; (3) treating the material resulting from step (2) to form a continuous glass material having the nanorods distributed therein; and (4) stretching the glass resulting from step (3) such that a plurality of the nanorods align in the same direction inside the bulk of the glass. Appellant appeals the following rejections: 1. Claims 21, 23-27, 29-32, and 34-36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Borrelli et al. (EP 0 105 701, published Sept. 29, 1982) in view of Dai et al. (US 2009/0052029 A1, published Feb. 26, 2009) and Ivanisevic et al. (US 2005/0158763 A1, published Jul. 21, 2005). 2. Claims 22, 28, and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Borrelli in view Dai, Ivanisevic and Allemand et al. (US 2008/0143906 A1, published Jun. 19, 2008). Appellant’s arguments focus on the subject matter common to claims 21, 26, and 32 (App. Br. 3-6). We select claim 21 as representative. Appellant does not advance any argument regarding claims 22, 28, and 33 under rejection (2) (App. Br. 6). Claims 22, 28, and 33 will stand or fall with our analysis regarding claim 21. ISSUE Did the Examiner reversibly err in concluding that it would have been obvious to substitute the nanorods of Dai and Ivanisevic for the silver Appeal 2012-005621 Application 11/897,899 3 particles in Borrelli in order to provide specific useful optical properties to the material? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES The Examiner’s findings regarding Borrelli, Dai, and Ivanisevic are located on pages 4-6 of the Answer. The Examiner finds that Borrelli discloses the limitations of claims 21, 26, and 32, except for “explicitly stating that the nanoparticles are nanorods produced from the deposition of an elemental metal onto a DNA template polymer; nanorods produced by dip pen nanolithography; or polymer synthesized nanorods” (Ans. 5). The Examiner finds that Dai teaches nanorods/nanowires are a known nanoparticle shape which is stretched to provide useful optical properties (Ans. 5). The Examiner finds that Ivanisevic teaches that it is known to produce polymer synthesized nanorods/nanowires by depositing elemental metal onto a DNA template polymer by dip pen nanolithography (Ans. 5). The Examiner concludes that it would have been obvious to use Dai’s nanorods formed by Ivanisevic’s methods as the nanoparticles in Borrelli to provide specific useful optical properties as taught by Dai (Ans. 5). The Examiner finds that using Ivanisevic’s methods to form the nanorods would have provided further control and manipulation of the nanorods in order to adapt them to particular applications (Ans. 5). Appellant argues that combining the teachings of Dai and Ivanisevic with Borrelli would not have been obvious because doing so would have changed the principle of operation of Borrelli (App. Br. 4). Appellant contends that Borrelli’s process requires heat elongation of silver halide particles for achieving the final properties such that Borrelli teaches away Appeal 2012-005621 Application 11/897,899 4 from substituting elemental metal nanorods for Borrelli’s silver halide particles (App. Br. 5). Appellant argues that substituting elemental metal nanorods for Borrelli’s silver halide particles would have prevented Borrelli from achieving its desired final properties. Id. While Borrelli does teach that the heating steps are critical to achieving the desired optical properties for glass containing silver halide nanoparticles (Borrelli, 19:20-22), Borrelli further teaches that the process parameters are applicable to any glass that contains silver halide particles (Borrelli, 21:15-21). In other words, the particular process parameters are vital only when silver halide particles are used. If other types of nanoparticles are employed different process parameters would have been used. Indeed, Borrelli discloses that “[v]irtually any glass containing silver metal particles may be made polarizing if it is stretched at a temperature near its softening point . . . with sufficient tensile stress to elongate the particles” (emphasis added) (Borrelli, 14:1-5). While Borrelli teaches that forming polarizing glass with silver metal particles requires high stresses, which Borrelli’s invention seeks to address, it would have been within the skill of the ordinary artisan to determine suitable stresses to form the polarizing glass using silver metal particles such as nanorod-shaped particles. Appellant has not established that substituting Dai’s and Ivanisevic’s nanorods for Borrelli’s silver halide particles would have changed the principle of operation of the glass. Rather, as pointed out by the Examiner, substituting Dai’s and Ivanisevic’s nanorods for Borrelli’s silver halide particles would have involved a change in process parameters that would have been within the skill of the ordinary artisan (Ans. 7). The ultimate function or principle of operation of the glass would have remained: light Appeal 2012-005621 Application 11/897,899 5 polarization. Indeed, Dai discloses that the nanorods may be used to affect optical properties that include polarization of the sheets (Dai, paras. [0034], [0069]). Accordingly, Appellant has not established that the combination would have changed the principle of operation of Borrelli’s glass. On this record, we affirm the Examiner’s § 103 rejections. DECISION The Examiner’s decision 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)(1)(iv). ORDER AFFIRMED cdc Copy with citationCopy as parenthetical citation