Ex Parte SeoDownload PDFPatent Trial and Appeal BoardFeb 27, 201310535153 (P.T.A.B. Feb. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/535,153 05/16/2005 Gon Seo SHI 2480 2398 7590 02/27/2013 Law Offices of John A. Parrish Suite 300 Two Bala Plaza Bala Cynwyd, PA 19004 EXAMINER MULCAHY, PETER D ART UNIT PAPER NUMBER 1762 MAIL DATE DELIVERY MODE 02/27/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GON SEO ____________ Appeal 2012-001024 Application 10/535,153 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and KAREN M. HASTINGS, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 33, 36-41, 43, and 45. We have jurisdiction under 35 U.S.C. § 6(b). Claims 34, 35, 42, 44, and 46-64 stand withdrawn from consideration as being directed to a non-elected invention. Claim 33 is illustrative: 33. A three-dimensional network of silica particles wherein the silica particles are connected by bridge chains wherein the connecting chain is comprised of carbon and hydrogen and wherein the network of silica particles are [sic, is] produced by: 1) reacting a1) silica particles functionalized with alkoxy silane coupling agents having functional groups with Appeal 2012-001024 Application 10/535,153 2 b) silica particles functionalized with alkoxy silane coupling agents having different functional groups so that the functional groups of a1) and b) are covalently bonded or 2) reacting silica particles with an organic connecting material wherein the connecting material is diamine, dihalide, or diisocyanate wherein the silica particles react with the diamine, dihalide, or diisocyanate groups of the connecting materials or 3) reacting silica particles functionalized with alkoxy silane coupling agents having functional groups with c) an organic connecting material wherein the connecting material is diamine, diisocyanate, or dihalide wherein the silica particles react with the diamine, dihalide, or diisocyanate groups of the connecting materials. The Examiner relies upon the following reference in the rejection of the appealed claims: Tomihisa et al. (Tomishisa) 5,683,501 Nov. 4, 1997 Appellant’s claimed invention is directed to a three-dimensional network of silica particles that is formed by reacting silica particles or functionalized silica particles with each other or with organic connecting material. Appealed claims 33, 36-41, 43, and 45 stand rejected under 35 U.S.C. §102(b) as anticipated by or, in the alternative, under 35 U.S.C. §103(a) as being unpatentable over Tomishisa. We have thoroughly reviewed each of Appellant’s arguments for patentability, as well as the declaration evidence relied upon in support thereof. However, we are in complete agreement with the Examiner that the claimed subject matter is unpatentable over the cited prior art. Accordingly, we will sustain the Examiner’s rejection for the reasons set forth in the Answer, and we add the following for emphasis only. Appeal 2012-001024 Application 10/535,153 3 Tomishisa, like Appellant, discloses a three-dimensional network of silica particles that are connected by organic bridge chains. Appellant disputes the three-dimensional nature of the reference composition by pointing to a reference disclosure at column 6, lines 13-17, which is a discussion of the geometry of the inorganic oxide, such as silica. However, as emphasized by the Examiner, this argument set forth in Appellant’s Brief and Declaration does not address the teaching of the reference cited by the Examiner, namely, at column 10, lines 46-54, wherein silica functionalized by hydrolyzable metallic compound (G) forms a three-dimensional network by carrying out hydrolysis and condensation. Hence, Appellant has not refuted the Examiner’s position that the three-dimensional network of silica particles disclosed by Tomishisa falls within the scope of the appealed claims. We are also not persuaded by Appellant’s argument in the Brief and Declaration that “[s]ilica particles are not used as a starting material for the inorganic fine particle or the compound fine particle of Tomishisa” (Decl. 1, 4th para.). First, the Examiner points to many reference disclosures that the inorganic fine particles include silica. Secondly, the appealed claims are not limited to reactions using silica as a starting material but, rather, embrace reactions using functionalized silica particles as a starting material. We are also not persuaded that the formula at page 12 of Appellant’s Brief, asserted to illustrate Tomishisa’s product of fine particles, supports Appellant’s argument that the silica network is not connected with an organic group comprising carbon and hydrogen. Manifestly, R3 is defined Appeal 2012-001024 Application 10/535,153 4 by the reference as including alkyl groups, etc. which contain carbon and hydrogen atoms. As a final point, we note that Declaration of Gon Seo, the present inventor, does not establish the credentials of the Declarant as an expert in the art and, therefore, the Declarant’s opinion that the silica particles of Tomishisa form an aggregate, and not a three-dimensional network, is of limited probative value, particularly since the reference describes the formation of a three-dimensional network. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner 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). AFFIRMED cam Copy with citationCopy as parenthetical citation