Ex Parte RoweDownload PDFPatent Trial and Appeal BoardMay 23, 201613565250 (P.T.A.B. May. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/565,250 08/02/2012 Michael Paul ROWE 22850 7590 05/25/2016 OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP, 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 398660US71 7845 EXAMINER PATEL, RONAK C ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): patentdocket@oblon.com oblonpat@oblon.com ahudgens@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL PAUL ROWE Appeal2014-003971 Application 13/565,250 Technology Center 1700 Before BEYERL YA. FRANKLIN, JULIA HEANEY, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 appeals the Examiner's final rejection of claims 1-7, 10, and 11. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on May 12, 2016. For the reasons set forth below, we AFFIRM-IN-PART, REVERSE- IN-PART, and enter NEW GROUNDS OF REJECTION. 1 Appellant identifies Toyota Motor Engineering & Manufacturing NA as the Real Party in Interest. App. Br. 1. Appeal2014-003971 Application 13/565,250 The Claimed Invention Appellant's disclosure relates to a magnetic core of superparamagnetic core shell nanoparticles having a particle size of less than 200 nm; wherein the core is an iron cobalt ternary alloy and the shell is a silicon oxide, and wherein the core is a monolithic structure of superparamagnetic core grains of the iron cobalt ternary alloy directly bonded by the silicon oxide shells. Abstract; Spec. 6, 11. 9--14. Independent claim 1 and dependent claim 11 are representative of the claims on appeal and are reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 21, 23): 1. A magnetic core, comprising: core shell nanoparticles having a particle size of 2 to 200 nm; wherein the core is an iron cobalt ternary alloy and the shell is a silicon oxide, the third component of the ternary alloy is a transition metal selected from the group consisting of scandium, titanium, vanadium, chromium, manganese, nickel, copper and zinc, and the magnetic core is a monolithic structure of superparamagnetic core grains of the iron cobalt ternary alloy directly bonded by the silicon oxide shells, which form a silica matrix. 11. A vehicle part compnsmg the electrical/magnetic conversion device according to claim 10, wherein the part is selected from the group consisting of a motor, a generator, a transformer, an inductor and an alternator. 2 Appeal2014-003971 Application 13/565,250 The References The Examiner relies on the following prior art in rejecting the claims on appeal: Moorhead et al., US 6,051,324 Apr. 18, 2000 (hereinafter "Moorhead") Xiao et al., US 2008/0087314 Al Apr. 17, 2008 (hereinafter "Xiao") Lee US 2010/0056366 Al Mar. 4, 2010 (hereinafter "Lee '366") Bumb et al., US 2010/0092384 Al Apr. 15, 2010 (hereinafter "Bumb") Hyeon et al., US 2011/0098453 Al Apr. 28, 2011 (hereinafter "Hyeon") Lee et al., US 2011/0129763 June 2, 2011 (hereinafter "Lee '7 63 ") The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1, 2, and 4--6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hyeon in view of Xiao. 2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hyeon and Xiao, further in view of Moorhead. 3. Claims 1, 2, and 4--6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bumb in view of Xiao. 4. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bumb and Xiao, further in view of Moorhead. 3 Appeal2014-003971 Application 13/565,250 5. Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee '366 in view of Xiao. 6. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee '366 and Xiao, further in view of Moorhead. 7. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lee '366 and Xiao, further in view of Lee '763. OPINION Rejection 1 Appellant argues claims 1, 5, and 6 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the combination of Hyeon and Xiao discloses all of claim 1 's limitations. Final Act. 2--4. The Examiner finds that Hyeon discloses: (a) a magnetic nanocomposite comprising a magnetic nanoparticle core; (b) a silica shell coating said core; ( c) a nanoparticle layer of a fourth period transition metal oxide, which coats said silica shell; and ( d) that the magnetic nanoparticle core material is selected from the group consisting of transition metal alloys. Final Act. 2, 3 (citing Hyeon, claims 1 and 2). The Examiner further finds that Hyeon discloses that: ( e) the transition metal is selected from the group consisting of iron, cobalt, chromium, and nickel; (f) the magnetic nanoparticle core has a diameter ranging from 1 nm to 1000 nm; (g) the silica shell has a thickness ranging from 1 nm to 1000 nm; and that (h) the fourth period transition metal oxide has a diameter ranging from 1 nm to 100 nm. Id. at 3 (citing Hyeon, claims 3, 4, 6, and 8). 4 Appeal2014-003971 Application 13/565,250 The Examiner finds that Xiao discloses claim 1 's limitation that "the magnetic nanocomposite is a monolithic structure of superparamagnetic core grains of the iron cobalt alloy directly bonded by the silicon oxide shells." Final Act. 3. In particular, the Examiner finds that Xiao discloses core-shell particles having a core formed from a core material and a shell formed from a shell material and consolidation of the core-shell particles to produce a thermoelectric material. Id. at 3, 4 (citing Xiao, Abstract). The Examiner further finds that Xiao discloses that the consolidation may include the application of heat and/or pressure to the core-shell particles and that the process consolidates the core-shell particles from a loose powder into a monolithic form. Final Act. 4 (citing Xiao i-f 109). The Examiner also finds that the motivation for consolidating the core-shell nanoparticles into a monolithic form under the application of heat and pressure would be to improve uniformity in the distribution of metal components. Id. (citing Xiao i-fi-1 124, 125). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of invention to form Hyeon's nanocomposite into a monolithic structure as taught by Xiao motivated by the desire to improve uniformity in the distribution of metal components. Final Act. 4 (citing Xiao i-fi-1 124, 125). The Examiner also concludes that "it would [have been] obvious to one of ordinary skill in the art at the time of the invention to form the ternary alloys of iron-cobalt-chromium in the magnetic core based on the teaching of Hyeon." Id. at 3. Appellant argues that this rejection should be reversed because "[ n ]owhere does Hyeon explicitly describe a ternary metal alloy and nowhere is a ternary alloy according to Claim 1 disclosed or suggested." App. Br. 5. 5 Appeal2014-003971 Application 13/565,250 We agree with Appellant's argument. Based on the record before us, we are not persuaded that the Examiner has identified sufficient evidence to support the finding that the combination of Hyeon and Xiao discloses "an iron cobalt ternary alloy," as required by claim 1. The Examiner does not identify sufficient evidence that Hyeon, either individually or in combination with Xiao, teaches or suggests this limitation. As noted by Appellant (App. Br. 6, 7), Hyeon describes "transition metal alloys," but "does not describe a ternary alloy." The Examiner also does not adequately explain why, in light of Hyeon's teachings, it would have been obvious to one of ordinary skill to arrive at the claimed invention. The Examiner's conclusory assertion (Final Act. 3) that "it would [have been] obvious to one of ordinary skill in the art at the time of invention to form the ternary alloys of iron-cobalt-chromium in the magnetic core based on the teaching of Hyeon," without more, is insufficient to sustain the Examiner's obviousness conclusion and findings in this regard. In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (holding "rejections on obviousness grounds cannot be sustained by mere conclusory statements"). Accordingly, we reverse the Examiner's rejection of claims 1, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hyeon and Xiao. Because claims 2 and 4 depend from claim 1, we also reverse the Examiner's rejection of these claims. Rejection 2 Claim 3 depends from claim 1 and adds the limitation: "wherein the iron cobalt ternary alloy is an iron cobalt vanadium alloy." App. Br. 21 (Claims App'x). The Examiner finds that the combination of Hyeon, Xiao, and Moorhead teaches all of claim 3 's limitations. Final Act. 5, 6. 6 Appeal2014-003971 Application 13/565,250 The Examiner finds that the combination of Hyeon and Xiao discloses all of claim 3 's limitations2 except that the "iron cobalt ternary alloy is an iron cobalt vanadium alloy." Final Act. 5 (citing Hyeon, claim 3). The Examiner, however, relies on Moorhead for teaching that missing limitation. Id. In particular, the Examiner finds that Moorhead discloses ceramic- coated, magnetic alloy particles comprising metal particles of alloys of iron, cobalt, and vanadium; or iron, cobalt, and chromium. Id. (citing Moorhead, col. 4, 11. 15-20, 25-31, 39, 40 and Fig. 1 ). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of invention "to include [the] iron-cobalt- vanadium alloy of Moorhead in the core of Hyeon motivated by the desire to have high performance magnetic properties, such as high permeability, high saturation induction, [and] low hysteresis energy loss." Final Act. 6 (citing Moorhead, col. 4, 11. 26-28). 2 In rejecting claim 3, the Examiner does not expressly state any findings of fact regarding the "magnetic core is a monolithic structure ... " limitation present in claim 3 by virtue of its dependence from claim 1. See Final Act. 5. Nor does the Examiner cross-reference or incorporate by reference findings of fact regarding this limitation made elsewhere in the Final Action. See id. Appellant does not raise this issue in the record (e.g., App. Br. 11-12 or Reply Brief, generally). Rather, on pages 11-12 of the Appeal Brief, Appellant argues that Moorhead, like Hyeon, does not qualify as a reference. Implicit in this position is that the arguments presented for Hyeon (previously made for Rejection 1 on pages 5-11 of the Appeal Brief) are included in Appellant's stated position for Rejection 2, which includes arguments pertaining to the "magnetic core is a monolithic structure ... " limitation. As such, we also treat the Examiner's Rejection 2 as including the findings of fact regarding the limitations of claim 1 made by the Examiner on pages 2--4 of the Final Office Action as they pertain to the "magnetic core is a monolithic structure ... " limitation. 7 Appeal2014-003971 Application 13/565,250 Appellant argues that the Examiner's rejection of claim 3 should be reversed because Moorhead "neither discloses nor suggests particles of 2 to 200 nm," as claimed. App. Br. 12. We do not find this argument persuasive. Appellant's argument is misplaced because the Examiner does not rely on Moorhead for teaching that limitation. Ans. 8, 9. Contrary to Appellant's argument, the Examiner relies on Hyeon for teaching claim 1 's "2 to 200 nm" limitation (Hyeon, claims 3, 4, 6, and 8}-and not on Moorhead's teachings. Moreover, based on the record before us, we find that the Examiner's finding that the combination of Hyeon, Xiao, and Moorhead teaches all of claim 3 's limitations (Final Act. 2---6) and rationale for why one of ordinary skill would have combined the teachings of these references to arrive at Appellant's claimed invention are well-supported by the record and based on sound technical reasoning. Hyeon, Abstract, i-f 10, claims 1- 4, 6, and 8; Xiao, Abstract, i-fi-1109, 124, 125; Moorhead, Abstract, Title, col. 4, 11. 15- 20, 25-31, 39, 40 and Fig. 1. Appellant's argument 1s msufficient to establish reversible error in the Examiner's conclusion and findings in this regard. Appellant argues that the Examiner's rejection should be reversed because "Moorhead employs commercially available materials ... and provides no instruction or guidance which would enable one of ordinary skill to prepare a ternary alloy nanoparticle." App. Br. 12. We are not persuaded by Appellant's argument. Prior art cited by an examiner is presumed to be enabling. Cf In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Indeed, once such a reference is found, the burden is on the applicant to provide evidence rebutting the presumption. Id.; see also MPEP 212 l(I). 8 Appeal2014-003971 Application 13/565,250 Here, as noted by the Examiner (Ans. 4, 5), Appellant has not directed us to sufficient evidence in the record to rebut the presumption that both Hyeon and Moorhead are enabling. In re Sasse, 629 F.2d at 681. Appellant's conclusory assertions that Moorhead "employs commercially available materials" and that it "provides no instruction or guidance which would enable one of ordinary skill to prepare a ternary alloy" (App. Br. 12), without more, are insufficient to satisfy Appellant's evidentiary burden in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Accordingly, we affirm the Examiner's rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over the combination ofHyeon, Xiao, and Moorhead. Rejection 3 Appellant argues claims 1, 5, and 6 as a group. Accordingly, we select claim 1 as representative of this group, and claims 5 and 6 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the combination of Bumb and Xiao discloses all of claim 1 's limitations. Final Act. 6-8. In particular, the Examiner relies on Bumb for teaching claim 1 's "iron cobalt ternary alloy" limitation. Id. at 6 (citing Bumb, i-fi-f 15, 17, 20, 21, and Fig. 1). Appellant argues that the Examiner's rejection should be reversed because "Bumb does not explicitly disclose a ternary alloy, nor is a method to prepare ternary alloy metal nanoparticles according to Claim 1 disclosed." App. Br. 12. Appellant also argues that "the Examiner has not shown that the combined descriptions of Bumb and Xiao make all the elements of Claim 1." Id. at 14. 9 Appeal2014-003971 Application 13/565,250 Based on the record before us, we are persuaded that the Examiner has not established by a preponderance of the evidence that Bumb, either individually or in combination with Xiao, discloses claim 1 's "iron cobalt ternary alloy" limitation. The Examiner does not identify sufficient evidence that Bumb or the combination of Bumb and Xiao teaches or suggests this limitation. As noted by Appellant (App. Br. 8), Bumb discloses "a particle having an inner metallic core, a biocompatible shell on the core ... suitable metals for the nanoparticles as including cobalt, iron, iron-cobalt, copper, platinum, nickel, gold, silver, titanium, [ruthenium] and alloys thereof." Bumb, however, does not disclose or suggest a ternary alloy according to claim 1. Indeed, none of the portions of Bumb cited by the Examiner as support for disclosure of this limitation teach or suggest an "iron cobalt ternary alloy" or a "ternary alloy," as recited in the claims. See Bumb i-fi-f 15, 17, 20, 21 and Fig. 1. The Examiner also does not provide an adequate technical explanation for why, in light of both Bumb' s and Xiao' s disclosures, it would have been obvious to one of ordinary skill to arrive at the claimed invention. In re Kahn, 44 I F .3d at 988. Accordingly, we reverse the Examiner's rejection of claims 1, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bumb and Xiao. Because claims 2 and 4 depend from claim 1, we also reverse the Examiner's rejection of these claims. Rejection 4 Appellant argues claims 3 and 4 as a group. Accordingly, we select claim 3 as representative of this group, and claim 4 stands or falls with claim 3. 37 C.F.R. § 41.37(c)(l)(iv). 10 Appeal2014-003971 Application 13/565,250 For this rejection, the Examiner relies on similar findings regarding the teachings of the prior art and essentially the same rationale as previously discussed above for the combination ofHyeon, Xiao, and Moorhead for why one of ordinary skill would have combined the teachings of Bumb, Xiao, and Moorhead to arrive at the claimed invention. Final Act. 8, 9. The Examiner finds that, like the combination of Hyeon and Xiao, the combination of Bumb and Xiao discloses all of claim 3 's limitations except a ternary alloy that "is an iron cobalt vanadium alloy." Id. at 8. As previously discussed above for Rejection 2, the Examiner relies on Moorhead for teaching that limitation. Id. (citing Moorhead, col. 4, 11. 15- 20, 25-31, 39, 40 and Fig. 1 ). Also as discussed above for Rejection 2, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of invention combine the teachings of Moorhead with the teachings of Bumb and Xiao to arrive at the claimed invention. Id. at 6 (citing Moorhead, col. 4, 11. 26-28). In response to this rejection, Appellant repeats essentially the same arguments presented above for the patentability of claim 3 in response to Rejection 2. See App. Br. 16. Thus, for the reasons provided by the Examiner, which we incorporate by reference and adopt as our own, and as discussed above in affirming the Examiner's rejection of claim 3 over the combination of Hyeon, Xiao, and Moorhead, we discern no reversible error in the Examiner's rejection of claim 3 over the combination of Bumb, Xiao, and Moorhead. Accordingly, we affirm the Examiner's rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bumb, Xiao, and Moorhead. 11 Appeal2014-003971 Application 13/565,250 Rejection 5 Appellant argues claims 1, 2, and 5-7 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the combination of Lee '3 66 and Xiao teaches all of claim 1 's limitations. Final Act. 9-11. The Examiner finds that Lee '3 66 discloses "[ c ]ore-shell nanoparticles having a core material and a mesoporous silica shell" and that "the core- shell nanoparticles may include a metal such as, but not limited to, Mn, Fe, Co, Ni, Cu, Zn, Ru, Rh, Pd, Ag, In, Sn, Re, Os, Ir, Pt, Au, or lanthanoids, or an alloy of two or more of them, as the metal core." Final Act. 9 (citing Lee, Abstract, i-f 24). The Examiner further finds that Lee '366 teaches that "the average size of the core-shell nanoparticles may have a range from about 10 nm to about 200 nm, or from about 10 nm to about 100 nm." Id. (citing Lee ,-r 36). The Examiner finds that Lee '366 discloses all of claim l's limitations except that "the multifunctional particle comprising core and shell is a monolithic structure of superparamagnetic core grains of the iron cobalt alloy directly bonded by the silicon oxide shells." Final Act. 10. The Examiner, however, relies on Xiao for teaching that missing limitation. Id. As previously discussed above for Rejection 1, the Examiner finds that Xiao discloses claim 1 's limitation that "the magnetic nanocomposite is a monolithic structure of superparamagnetic core grains of the iron cobalt alloy directly bonded by the silicon oxide shells." Final Act. 10 (citing Xiao, Abstract, i-fi-1109, 124, 125). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of invention to form Lee '366's nanocomposite into a monolithic structure as taught by 12 Appeal2014-003971 Application 13/565,250 Xiao motivated by the desire to improve uniformity in the distribution of metal components. Id. (citing Xiao i-fi-f 124, 125). Appellant argues that the Examiner's rejection should be reversed because Lee neither individually nor in combination with Xiao discloses "an iron cobalt ternary alloy nanoparticle as according to Claim 1." App. Br. 17. We agree with Appellant's argument in this regard. Based on the record before us, we are persuaded that the Examiner has not established by a preponderance of the evidence that Lee '366, either individually or in combination with Xiao, discloses an "iron cobalt ternary alloy," as recited in claim 1. The Examiner does not identify sufficient evidence in the record that Lee '366 or the combination of Lee '366 and Xiao teaches or suggests this limitation. As noted by Appellant (App. Br. 16, 17), Lee discloses "a core shell structure having a metal core and a metal oxide" and describes "a list of metals or alloys of two or more," but it does not teach or suggest that the core is an iron cobalt ternary alloy, as required by claim 1. See Lee '366, Abstract, i-fi-124, 26. Accordingly, we reverse the Examiner's rejection of claims 1, 2, and 5-7 under 35 U.S.C. § 103(a) as unpatentable over the combination of Lee '366 and Xiao. Rejection 6 Appellant argues claims 3 and 4 as a group. We, therefore, select claim 3 as representative of this group, and claim 4 stands or falls with claim 3. 37 C.F.R. § 41.37(c)(l)(iv). For this rejection, the Examiner relies on similar findings regarding the teachings of the prior art references and essentially the same rationale for why one of ordinary skill would have 13 Appeal2014-003971 Application 13/565,250 combined the teachings of Lee '366, Xiao, and Moorhead to arrive at the claimed invention, as provided above for the combination of Hyeon, Xiao, and Moorhead for Rejection 2. Final Act. 11, 12. The Examiner finds that, like the combination of Hyeon and Xiao, the combination of Lee '3 66 and Xiao discloses all of claim 3 's limitations except that it does not disclose a ternary alloy that "is an iron cobalt vanadium alloy." Id. at 11. As previously discussed above for Rejection 2, the Examiner relies on Moorhead for teaching that limitation. Id. (citing Moorhead, col. 4, 11. 15-20, 25-31, 39, 40 and Fig. 1) and concludes that it would have been obvious to one of ordinary skill in the art at the time of invention combine the teachings of Moorhead with the teachings of Lee '366 and Xiao to arrive at the claimed invention. Id. at 11, 12 (citing Moorhead, col. 4, 11. 26-28). In response to this rejection, Appellant repeats essentially the same arguments presented above for the patentability of claim 3 in response to Rejection 2. See App. Br. 18, 19. Thus, for the reasons provided by the Examiner, which we incorporate by reference and adopt as our own, and as discussed above in affirming the Examiner's rejection of claim 3 over the combination of Hyeon, Xiao, and Moorhead, we discern no reversible error in the Examiner's rejection of claim 3 over the combination of Lee '366, Xiao, and Moorhead. Accordingly, we affirm the Examiner's rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Lee '366, Xiao, and Moorhead. 14 Appeal2014-003971 Application 13/565,250 Rejection 7 Appellant argues claims 10 and 11 as a group. We, therefore, select claim 11 as representative of this group, and claim 10 stands or falls with claim 11. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that the combination of Lee '366, Xiao, and Lee '763 teaches all of claim 11 's limitations. Final Act. 12-13. The Examiner finds that the combination of Lee '3 66 and Xiao discloses nearly all of claim 11 's limitations except that "the core-shell nanoparticles are used in vehicle part[s] such as transformers [and] motors." Final Act. 12. The Examiner, however, relies on Lee '763 for teachings that account for that limitation. Id. In particular, the Examiner finds that Lee '7 63 teaches that "core-shell nanoparticles may be useful as the catalyst or electrode materials of fuel cells" and that fuel cells are "considered to be the next-generation energy source ... [p ]articularly, in automobile-related fields." Id. (citing Lee '763 i-fi-12, 14). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of invention to use the core-shell nanoparticles of Lee '7 63 in view of Xiao and include them in fuel cells which are used in vehicles for improved motor performance such as increased catalytic activity and selectivity. Final Act. 12, 13 (citing (Lee '763 ,-r 26). Appellant argues that the Examiner's rejection should be reversed because the Examiner does not provide sufficient evidence for why, based on the teachings of the prior art, one of ordinary skill would have been led to Lee '763 and would have combined the teachings of Lee '763 with the other prior art references to arrive at the claimed invention. App. Br. 19. 15 Appeal2014-003971 Application 13/565,250 We agree with Appellant's argument regarding the evidentiary support for the prior art combination as found by the Examiner for rejecting claim 11. Based on the record before us, we are persuaded the Examiner has not established by a preponderance of the evidence that a person of ordinary skill in the art would have combined the references in the manner claimed. As noted by Appellant (App. Br. 19), Lee '763 appears to be directed to technology "unrelated to that of the claimed invention" and the Examiner's findings regarding a fuel cell transforming chemical energy (Final Act. 12, 13) are unsupported by sufficient evidence in the record. Accordingly, we reverse the Examiner's rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over the combination of Lee '366, Xiao, and Lee '763. NEW GROUNDS OF REJECTION Under the provisions of 37 C.F.R. § 41.50(b ), we enter the following nevv grounds of rejection. I. Claims 1 and 4 are unpatentable under 35 U.S.C. § 103(a) over the combination of Hyeon, Xiao, and Moorhead. The combination ofHyeon, Xiao, and Moorhead teaches or suggests all of the limitations of claims 1 and 4. As found by the Examiner, Hyeon discloses a magnetic core comprising core shell nanoparticles having a particle size of 2 to 200 nm. Final Act. 2, 3. Hyeon discloses: (a) a magnetic nanocomposite comprising a magnetic nanoparticle core; (b) a silica shell coating said core; ( c) a nanoparticle layer of a fourth period transition metal oxide, which coats said silica shell; and ( d) that the magnetic nanoparticle core material is selected from the group consisting of transition metal alloys; ( e) the transition metal is selected from the group consisting of 16 Appeal2014-003971 Application 13/565,250 iron, cobalt, chromium, and nickel; (f) the magnetic nanoparticle core has a diameter ranging from 1 nm to 1000 nm; (g) the silica shell has a thickness ranging from 1 nm to 1000 nm; and that (h) the fourth period transition metal oxide has a diameter ranging from 1 nm to 100 nm. Hye on, claims 1- 4, 6, and 8. As found by the Examiner, Xiao discloses that "the magnetic nanocomposite is a monolithic structure of superparamagnetic core grains of the iron cobalt alloy directly bonded by the silicon oxide shells." Final Act. 3, 4. In particular, Xiao discloses core-shell particles having a core formed from a core material and a shell formed from a shell material and consolidation of the core-shell particles to produce a thermoelectric material. Xiao, Abstract. Xiao further discloses that the consolidation may include the application of heat and/or pressure to the core-shell particles; that the process consolidates the core-shell particles from a loose powder into a monolithic form; and that consolidating the core-shell nanoparticles into a monolithic form under the application of heat and pressure would improve uniformity in the distribution of metal components. Id. at i-fi-f 109, 124, 125. We conclude that, at the time of the invention, it would have been obvious to one of ordinary skill in the art to form Hyeon's magnetic core into a monolithic structure as taught by Xiao to improve uniformity in the distribution of metal components. Xiao i-fi-f 124, 125. As found by the Examiner (Final Act. 5), Moorhead discloses iron cobalt ternary alloys of iron, cobalt, and vanadium; or iron, cobalt, and chromium. Moorhead, col. 4, 11. 15-20, 25-31, 39, 40 and Fig. 1. We conclude, at the time of the invention, it would have been obvious to one of ordinary skill in the art to include the iron-cobalt-chromium ternary alloy of Moorhead in the core of Hyeon to have high performance magnetic 17 Appeal2014-003971 Application 13/565,250 properties, such as high permeability, high saturation induction, and low hysteresis energy loss. Moorhead, col. 4, 11. 26-28. II. Claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of Bumb, Xiao, and Moorhead. The combination ofBumb, Xiao, and Moorhead teaches or suggests all of the limitations of claims 1. As found by the Examiner, Bumb discloses a magnetic core comprising core shell nanoparticles having a particle size of 2 to 200 nm. Final Act. 6. Bumb discloses a multifunctional particle comprising and inner metallic core 1; that the metallic core is made from any suitable metal alloys that form nanoparticles (such as cobalt, iron- cobalt, nickel, copper; and that the particles of the inner metallic core are less than about 50 nm. Bumb i-fi-f 15, 17, 20 and Fig. 1. Bumb further discloses that the inner metallic core is coated with a biocompatible shell made from silica and that the thickness of the shell is less than about 5 nm. Id. at i-fi-f 20, 21. As found by the Examiner (Final Act. 3, 4) and previously discussed above, Xiao discloses that the magnetic nanocomposite is a monolithic structure of superparamagnetic core grains of the iron cobalt alloy directly bonded by the silicon oxide shells. Xiao, Abstract, i-fi-f 109, 124, 125. We conclude that, at the time of the invention, it would have been obvious to one of ordinary skill in the art to form Bumb 's magnetic core into a monolithic structure as taught by Xiao to improve uniformity in the distribution of metal components. Xiao i-fi-f 124, 125. As found by the Examiner (Final Act. 5) and previously discussed above, Moorhead discloses iron cobalt ternary alloys of iron, cobalt, and vanadium; or iron, cobalt, and chromium. Moorhead, col. 4, 11. 15-20, 25- 31, 39, 40 and Fig. 1. 18 Appeal2014-003971 Application 13/565,250 We conclude, at the time of the invention, it would have been obvious to one of ordinary skill in the art to include the iron-cobalt-chromium ternary alloy of Moorhead in the core of Bumb to have high performance magnetic properties, such as high permeability, high saturation induction, and low hysteresis energy loss. Moorhead, col. 4, 11. 26-28. III. Claims 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of Lee '366, Xiao, and Moorhead. The combination of Lee '366, Xiao, and Moorhead teaches or suggests all of the limitations of claims 1. As found by the Examiner, Lee '366 discloses a magnetic core comprising core shell nanoparticles having a particle size of 2 to 200 nm. Final Act. 9. Lee '3 66 discloses core shell nanoparticles having a core material and a mesoporous silica shell and that the core shell nanoparticles may include a metal such as, but not limited to, Mn, Fe, Co, Ni, Cu, Zn, Ru, Rh, Pd, Ag, In, Sn, Re, Os, Ir, Pt, Au, or lanthanoids, or an alloy of two or more of them, as the metal core. Lee, Abstract, i124. Lee '366 further discloses that the average size of the core shell nanoparticles may have a range from about 10 nm to about 200 nm, or from about 10 nm to about 100 nm. Id. at i-f 3 6. As found by the Examiner (Final Act. 3, 4) and previously discussed above, Xiao discloses that the magnetic nanocomposite is a monolithic structure of superparamagnetic core grains of the iron cobalt alloy directly bonded by the silicon oxide shells. Xiao, Abstract, i-fi-1109, 124, 125. We conclude that, at the time of the invention, it would have been obvious to one of ordinary skill in the art to form Lee '366's magnetic core into a monolithic structure as taught by Xiao to improve uniformity in the distribution of metal components. Xiao i-fi-1 124, 125. 19 Appeal2014-003971 Application 13/565,250 As found by the Examiner (Final Act. 5) and previously discussed above, Moorhead discloses iron cobalt ternary alloys of iron, cobalt, and vanadium; or iron, cobalt, and chromium. Moorhead, col. 4, 11. 15-20, 25- 31, 39, 40 and Fig. 1. We conclude, at the time of the invention, it would have been obvious to one of ordinary skill in the art to include the iron-cobalt-chromium ternary alloy of Moorhead in the core of Lee '366 to have high performance magnetic properties, such as high permeability, high saturation induction, and low hysteresis energy loss. Moorhead, col. 4, 11. 26-28. DECISION/ORDER The Examiner's rejections of claims 1, 2, and 4---6 under 35 U.S.C. § 103(a) as unpatentable over Hyeon in view of Xiao is reversed. The Examiner's rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Hyeon and Xiao, further in view of Moorhead is affirmed. The Examiner's rejection of claims 1, 2, and 4--6 under 35 U.S.C. § 103(a) as unpatentable over Bumb in view of Xiao is reversed. The Examiner's rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Bumb and Xiao, further in view of Moorhead is affirmed. The Examiner's rejection of claims 1, 2, and 5-7 under 35 U.S.C. § 103(a) as unpatentable over Lee '366 in view of Xiao is reversed. The Examiner's rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Lee '366 and Xiao, further in view of Moorhead is affirmed. 20 Appeal2014-003971 Application 13/565,250 The Examiner's rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as unpatentable over Lee '366 and Xiao, further in view of Lee '7 63 is reversed. It is ordered that the Examiner's decision is affirmed-in-part, reversed-in-part, and new grounds of rejection entered. New grounds of rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hyeon, Xiao, and Moorhead; of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Bumb, Xiao, and Moorhead; and of claim 1under35 U.S.C. § 103(a) as unpatentable over the combination of Lee '366, Xiao, and Moorhead are set forth. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the appellant, WITHil-.J TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record. 21 Appeal2014-003971 Application 13/565,250 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-IN-PART, REVERSED-IN-PART, AND NEW GROUNDS OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) 22 Copy with citationCopy as parenthetical citation