Ex Parte Seals et alDownload PDFPatent Trial and Appeal BoardNov 28, 201713162866 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 13/162,866 06/17/2011 Roland D. Seals 65682.US (2119) 8440 69680 7590 11/30/2017 Consolidated Nuclear Security, LLC LUEDEKA NEELY GROUP, P.C. P.O. BOX 1871 KNOXVILLE, TN 37901 EXAMINER MANGOHIG, THOMAS A ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): LNG.PATENT@gmail.com docketing @ luedeka.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLAND D. SEALS, PAUL A. MENCHHOFER, and JAMES O. KIGGINS JR. Appeal 2017-001174 Application 13/162,866 Technology Center 1700 Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants1 request our review under 35 U.S.C. § 134(a) of a final rejection of claims 9, 10, and 13-162. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Consolidated Nuclear Security, LLC. Appeal Brief filed January 11, 2016 (“App. Br.”), 1. According to the Specification filed June 17, 2011 (“Spec.”), paragraph 1, the U.S. Government has rights to the described invention pursuant to a contract between the U.S. Department of Energy and Babcock & Wilcox Technical Services Y-12, LLC. 2 Claims 1-3, 5-8, 11, and 12 stand withdrawn from consideration. Final Office Action entered August 11, 2015 (“Final Act.”), 2. Appeal 2017-001174 Application 13/162,866 STATEMENT OF THE CASE Appellants claim a titanium-group structure comprising a titanium- group powder particle and a plurality of titanium group nano-whiskers grown directly from and anchored to the titanium-group powder particle. App. Br. 2. Claim 9 illustrates the subject matter on appeal and is reproduced below: 9. A titanium-group structure comprising: a titanium-group powder particle having a maximum dimension of about 500 microns; and a plurality of titanium group nano-whiskers grown directly from and anchored to the titanium-group powder particle, the titanium group nano-whiskers having a maximum diameter of about one hundred nanometers and having a length that is at least about one hundred nanometers. App. Br. 15 (Claims Appendix) (emphasis added). The Examiner sets forth the following rejections in the Final Office Action, and maintains the rejections in the Answer entered August 25, 2016 (“Ans.”): I. Claims 9, 10, and 13-15 under 35 U.S.C. § 103(a) as unpatentable over Yadav et al. (US 6,652,967 B2, issued November 25, 2003); and II. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Yadav as evidenced by Pierson, Handbook of Refractory Carbides and Nitrides, Properties, Characteristics, Processing and Applications, Noyes Publications, 71, (1996). 2 Appeal 2017-001174 Application 13/162,866 DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants’ contentions, we affirm the Examiner’s rejections of claims 9, 10, and 13-16 under 35 U.S.C. § 103(a) for the reasons set forth in the Final Office Action, the Answer, and below. Despite the separate rejection of claim 16, Appellants argue all of the claims as a group on the basis of claim 9, to which we limit our discussion. App. Br. 3-12; 37 C.F.R. § 41.37(c)(l)(iv). Yadav discloses a nano-dispersed powder comprising, e.g., tubular nanoparticles (nano-whiskers) dispersed on, and stably attached to, the surface of carrier particles (powder particles). Col. 2,11. 27-32; col. 5,11. 31—43. Yadav discloses that the nanoparticles and carrier particles may both be made of titanium carbide. Col. 5,11. 37-43; col. 6,11. 4-8, 23; col. 7,11. 18-19, 34. Yadav discloses that the carrier particles (powder particles) have an average particle size of less than 5 microns, overlapping the range of a maximum dimension of about 500 microns recited in claim 9. Col. 7,11. 51- 59. Yadav discloses that the nanoparticles (nano-whiskers) have an aspect ratio of between 1 and 1,000,000, and preferably have a mean particle size of less than 100 nanometers. Col. 4,11. 42-50. Appellants do not dispute the Examiner’s finding that this nanoparticle aspect ratio and particle size “would result in particles having a diameter and length within a range that overlaps with the ranges recited [in claim 9]”. Compare Final Act. 2-3, with App. Br. 3-12. The Examiner finds that although Yadav does not explicitly disclose that the titanium nanoparticles (nano-whiskers) are grown directly from the titanium carrier particles (powder particles), because the nano-dispersed 3 Appeal 2017-001174 Application 13/162,866 powders disclosed in Yadav “meet[] the requirements of the claimed composition,” absent evidence of the criticality of the “grown directly from” process limitation recited in claim 9, “Yadav meets the requirements of the instant claims.” Final Act. 3. Appellants argue that the powder particle recited in claim 9 provides the catalyst for, and actively participates in, growth of the nano-whiskers because the nano-whiskers incorporate titanium available only from the powder particle during their formation. App. Br. 4-5. Appellants argue that the recitation in claim 9 of nano-whiskers “grown directly from” a titanium- group powder particle thus imparts distinctive structural characteristics to the claimed titanium-group structure and best defines the structure, and is therefore a structural limitation that must be given patentable weight under In re Garnero, 412 F.2d 276, 279 (CCPA 1979). App. Br. 5-9. Appellants further argue that Yadav’s nanoparticles are not actually grown from the carrier particles, and Appellants contend that, unlike their powder particle, Yadav’s carrier particles do not participate in formation of the nanoparticles, and are not a growth catalyst for the nanoparticles. App. Br. 3—4. Appellants assert that instead, Yadav’s nanoparticles are adhesively secured to the carrier particles during fabrication of the nano-dispersed powder. App. Br. 5. Appellants argue that the Examiner “has failed to cite any prior art references disclosing or suggesting nanostructures being joined to a substrate by being grown directly from the substrate.” App. Br. 10. Appellants further argue that “the Examiner has provided no rationale as to why such a structure would be obvious in view of Yadav or why growing nanostructures from a substrate would produce a product that is structurally 4 Appeal 2017-001174 Application 13/162,866 the same or similar to a product where the nanostructures are merely adhesively joined to a substrate using a catalyst solution.” Id. However, although process limitations in a product claim can impart structural characteristics to the claimed product that distinguish it from a prior art product, in the present case, any structural characteristics imparted to the titanium-group structure of claim 9 by growing the recited nano whiskers directly from a powder particle do not patentably distinguish the claimed titanium-group structure from the nano-dispersed powder disclosed in Yadav, for at least the following reasons. As discussed above, the composition and size of Yadov’s tubular nanoparticles (nano-whiskers) and carrier particles (powder particles) meet the limitations of claim 1, and Yadov discloses that the nanoparticles (nano whiskers) are stably attached—or anchored to—the carrier particles (powder particles). Accordingly, we agree with the Examiner that Yadov’s nano- dispersed powder appears to be the same or substantially the same as the titanium-group structure recited in claim 9. Therefore, the burden properly shifts to Appellants to establish an unobvious difference between the nano whiskers grown directly from and anchored to a powder particle recited in claim 9 and Yadov’s nanoparticles stably attached to the surface of carrier particles. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (“[wjhere a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.”). Appellants argue that the Declaration of Ronald Seals submitted to the Patent and Trademark Office on June 12, 2015 demonstrates “an unobvious 5 Appeal 2017-001174 Application 13/162,866 difference between” Yadov’s nano-dispersed powder and the claimed titanium-group structure. App. Br. 11-13. According to the Seals Declaration, Yadov’s nanoparticles are loosely and adhesively attached to the carrier particles. ^ 11. The Declaration asserts that in contrast, Appellants’ nano-whiskers are grown directly from and anchored to a powder particle, which produces nano-whiskers that are an integrated extension of the powder particle, and results in a “fully integrated titanium- group structure.” 8, 11, 14. The Declaration indicates that this integrated structure is highly beneficial because it provides a very strong joint between the nano-whiskers and the support material (powder particle), assists in preventing crack formation, and provides a greater ability to control the grain structure in the nano-whiskers. ^ 15. However, the structural characteristics asserted by Appellants and the Seals Declaration to be imparted to the claimed titanium-group structure by growing nano-whiskers directly from a powder particle—nano-whiskers that are an integrated and seamless extension of the powder particle to form a fully integrated titanium-group structure—are not recited in claim 9. Nor are the other properties asserted in the Declaration to be imparted to the claimed titanium-group structure by the process recited in claim 9, such as a very strong joint between the nano-whiskers and the powder particle. Accordingly, Appellants and the Seals Declaration Appellants do not identify any structural distinction, or unobvious difference, between the nano-dispersed powder comprising nanoparticles stably attached to the surface of carrier particles disclosed in Yadov, and the titanium-group structure recited in claim 9 comprising nano-whiskers grown directly from and anchored to a powder particle. In addition, Appellants and the Seals 6 Appeal 2017-001174 Application 13/162,866 Declaration do not provide comparative testing to show that growing the nano-whiskers directly from a powder particle as recited in claim 9 imparts any limiting structural characteristics recited in claim 9 to the claimed titanium-group structure that distinguish it from the nano-dispersed powder disclosed in Yadov comprising nanoparticles stably attached to the surface of carrier particles. Therefore, on balance, the preponderance of the evidence relied upon in this appeal supports the Examiner’s conclusion of obviousness. We accordingly sustain the Examiner’s rejection of claims 9, 10, and 13-16 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 9, 10, and 13-16 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation