Ex Parte Pavlovsky et alDownload PDFPatent Trial and Appeal BoardJun 3, 201311737586 (P.T.A.B. Jun. 3, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte IGOR PAVLOVSKY, RICHARD LEE FINK, and ZVI YANIV ____________ Appeal 2011-000194 Application 11/737,586 Technology Center 2800 ____________ Before MAHSHID D. SAADAT, JASON V. MORGAN, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-000194 Application 11/737,586 2 BACKGROUND Appellants’ disclosed invention relates to sensors using palladium metal for gaseous hydrogen sensing. Spec. 1, ll. 13. Independent claim 1 is illustrative and is reproduced below: 1. A sensor comprising nanoparticles that expand in a presence of hydrogen, the nanoparticles having a particle size less than 50 nanometers, the nanoparticles deposited on a substrate with a density where an average ratio of particle size to a distance between particle centers is in a range of 0.85 to 1.00. REJECTIONS Claims 1-4, 7, 8, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bhethanabotla (US 7,047,792 B1). Ans. 3-4. Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Monty (US 7,237,429 B2). Ans. 4-6. ISSUES With respect to the Examiner’s rejection under 35 U.S.C. § 103 (a) in view of Bhethanabotla, Appellants argue that there are differences between the claimed invention and what is taught within Bhethanabotla, including that Bhethanabotla does not discuss determining a density of nanoparticles and includes nothing to lead one skilled in the art to investigate whether a particular density or size ratio would be optimum or workable. App. Br. 3-5. With respect to the Examiner’s rejection under 35 U.S.C. § 103 (a) in view of Monty, Appellants similarly argue that one skilled in the art at the time of the invention would not have been able to use routine skill to determine the parameters recited in claim 1. App. Br. 6. These arguments present us with the following issues: Appeal 2011-000194 Application 11/737,586 3 1) Did the Examiner err in finding that Bhethanabotla discloses or suggests each of the limitations recited in independent claim 1? 2) Did the Examiner err in finding that Monty discloses or suggests “the nanoparticles deposited on a substrate with a density where an average ratio of particle size to a distance between particle centers is in a range of 0.85 to 1.00,” as recited in independent claim 1? ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusion. We adopt as our own the findings and reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. Additionally, we highlight and address specific findings and arguments regarding independent claim 1 for emphasis as follows. 1) First Issue We are not persuaded by Appellants’ arguments that there are differences between the claimed invention and what is taught by Bhethanabotla (App. Br. 3-5). We agree with the Examiner’s detailed findings showing that each of the recited limitations of claim 1 is disclosed by or obvious in view of Bhethanabotla (Ans. 4, 6-11). With respect to Appellants’ arguments that Bhethanabotla does not discuss determining a density of nanoparticles and says nothing to lead one skilled in the art to investigate whether a particular density or size ratio would be optimum or workable (App. Br. 4-5), we agree with the Examiner’s findings and analysis. In particular, with respect to Appellants’ Appeal 2011-000194 Application 11/737,586 4 argument related to the expansion of nanoparticles in presence of hydrogen (App. Br. 3-4), we find that Bhethanabotla states that hydrogen absorption causes expansion. Col. 3, ll. 17-19. See also Ans. 7-8 (citing Bhethanabotla, col. 4, ll. 32-33; col. 5, ll. 59-60 (stating that Pd and Pd alloys reversibly interact with hydrogen)). In addition to agreeing with the Examiner’s findings (Ans. 8-10), we note that Appellants claim a range of 0.85 to 1.00 for an average ratio of particle size to a distance between particle centers. As the Examiner correctly finds, the ratio of 1.00 occurs when the nanoparticles contact one another, which is optimum for device effectiveness and short response time (Ans. 8-9). Thus, Appellants have claimed a range in the upper 15% of possible average ratios. Appellants’ have not provided persuasive argument, explanation or objective evidence showing that the upper 15% is critical or would lead to unpredictable or unexpected results, as compared, for example, to a claimed ratio of 0.80 to 1.00. In re Aller, 220 F.2d 454, 456, 459 (CCPA 1955); In re Geisler, 116 F. 3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results must be established by factual evidence.”) Therefore, we agree with the Examiner that one skilled in the art at the time of the invention would have been able to use routine skill to determine the parameters recited in claim 1 (Ans. 4). Thus, Appellants have not persuaded us that the Examiner erred in finding that Bhethanabotla discloses the invention as recited in independent claim 1, and dependent claims 2-4, 7, 8, 10, and 11, not separately argued (App. Br. 6). Accordingly, based on the record before us, we sustain the Examiner’s rejection of claims 1-4, 7, 8, 10, and 11 under 35 U.S.C. § 103(a) as being unpatentable over Bhethanabotla. Appeal 2011-000194 Application 11/737,586 5 2) Second Issue For the same reasons discussed supra with respect to Bhethanabotla, we are not persuaded by Appellants’ argument that one skilled in the art at the time of the invention would not have been able to use routine skill, using the teachings of Monty, to determine the parameters recited in claim 1 (App. Br. 6). Thus, Appellants have not persuaded us that the Examiner erred in finding that Monty discloses “the nanoparticles deposited on a substrate with a density where an average ratio of particle size to a distance between particle centers is in a range of 0.85 to 1.00,” as recited in independent claim 1. Accordingly, based on the record before us, we do not agree that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Monty, and dependent claims 2-14, not separately argued (App. Br. 6-7). Therefore, we sustain the 35 U.S.C. § 103(a) rejection of claims 1-14 over Monty. DECISION We affirm the Examiner’s rejection of claims 1-14 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ELD Copy with citationCopy as parenthetical citation