11810508 (B.P.A.I. Mar. 6, 2012)

Ex Parte Petruska et al

Board of Patent Appeals and InterferencesMar 6, 2012

11810508 (B.P.A.I. Mar. 6, 2012)

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. 11/810,508 06/05/2007 Melissa A. Petruska S-112,817 3554 35068 7590 03/06/2012 LOS ALAMOS NATIONAL SECURITY, LLC LOS ALAMOS NATIONAL LABORATORY PPO. BOX 1663, LC/IP, MS A187 LOS ALAMOS, NM 87545 EXAMINER KUGEL, TIMOTHY J ART UNIT PAPER NUMBER 1765 MAIL DATE DELIVERY MODE 03/06/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MELISSA A. PETRUSKA and VICTOR L. KLIMOV ____________ Appeal 2010-003988 Application 11/810,508 Technology Center 1700 ____________ Before CHUNG K. PAK, CHARLES F. WARREN, and MARK NAGUMO, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 15 through 18.1 Claims 1 through 14 and 23 through 26, the other pending claims remaining in the above-identified application, stand withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6. 1 See Substituted Appeal Brief (“App. Br.”) filed September 16, 2009, 2; and Examiner’s Answer (“Ans.”) filed October 26, 2009, 2. Appeal 2010-003988 Application 11/810,508 2 STATEMENT OF THE CASE The subject matter on appeal is directed to “alcohol soluble colloidal nanocrystals useful in the formation of sol-gel based solid composites” (Spec. 4, ll. 16-17.) One of such alcohol soluble colloidal nanocrystals (6- amino-1-hexanol-capped NQDs (nanocrystal quantum dots)) is a reaction product of quantum dots (colloidal nanocrystals) and 6-aminohexanol (a multi-functional compound), which is illustrated in Figure 1 of the above- identified application as shown below: The Specification states that semiconductor nanocrystals are “often referred to as nanocrystal quantum dots (NQDs)” and have a particle size below about 150 Angstroms (Spec. 1, ll. 13-14 and 4, ll. 18-19). The colloidal nanocrystals are generally members of a crystalline population having a narrow size distribution and include a core of a binary, ternary, or quaternary semiconductor or similar material with an optional overcoating material selected from Group II-VI compounds. (Spec. 4-6). Details of the appealed subject matter are recited in representative claim 15 reproduced from the Claims Appendix to the Appeal Brief as shown below: Appeal 2010-003988 Application 11/810,508 3 15. Alcohol-soluble colloidal nanocrystals comprising: a reaction product of colloidal nanocrystals and a multi- functional compound of the formula Xx-(Zn)-Yy where X is an amino group, a thiol group, a phosphonic acid group, a phosphine oxide group, a nitrile group, a thiocyanate group, or a carboxylic acid group, x is an integer and is one or more, Z is a hydrocarbon group, a polyether group, an ethylene oxide group, a propylene oxide group or a mixture thereof, n is from 1 to 20, Y is a hydroxyl group, a carboxylic acid group, a sulfonic acid group, a phosphonic acid group, or an alkoxysilane group and y is an integer and is one or more. Appellants seek review of the Examiner’s rejection of claims 15 through 18 under 35 U.S.C. § 102(e) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as unpatentable over, the disclosure of Barany (US 2005/0266417 A1 published on Dec. 1, 2005). (See App. Br. 4 and Ans. 3.) We reverse the Examiner’s § 102(e) or 103(a) rejection for the reasons set forth by Appellants at pages 5 through 7 of the Appeal Brief. As correctly argued by Appellants, the Examiner has not shown that Barany teaches or would have suggested directly reacting its quantum dots (colloidal nanocrystals) with 1-aminohexanol to form an alcohol soluble nanocrystal reaction product of quantum dots (colloidal nanocrystals) and 1- aminohexanol (a multi-functional compound) as illustrated in Figure 1 of the instant application. (See App. Br. 5-7.) Indeed, the Examiner does not dispute Appellants’ statement that Barany teaches or suggests reacting 1- aminohexanol (a multi-functional compound) with magnetic beads. (Compare App. Br. 5 with Ans. 5-6.) Rather, the Examiner takes the position that quantum dots (nanocrystals) reacted with magnetic beads containing COOH groups constitute nanocrystals. (See Ans. 3 and 5.) However, on this record, the Examiner has not shown that one of ordinary Appeal 2010-003988 Application 11/810,508 4 skill in the art would have interpreted or understood magnetic beads containing COOH groups as colloidal nanocrystals. Id. ORDER In view of the foregoing, it is ORDERED that the decision of the Examiner rejecting the claims on appeal is REVERSED. REVERSED ssl