Ex Parte Taube

Board of Patent Appeals and Interferences

Jan 30, 2009

10438597 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JOEL A. TAUBE
______________

Appeal 2008-4708
Application 10/438,597
Technology Center 1700
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Decided: January 30, 2009
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Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 12 through 20 and 22 through 26 in the
Office Action mailed May 11, 2007 (Office Action). 35 U.S.C. §§ 6 and
134(a) (2002); 37 C.F.R. § 41.31(a) (2007).
We reverse the decision of the Primary Examiner.

Appeal 2008-4708
Application 10/438,597
Claim 12 illustrates Appellant’s invention of a method for producing
nano-particles from a precursor material, and is representative of the claims
on appeal:
12. A method for producing nano-particles from a precursor material,
comprising:
vaporizing the precursor material to produce a vapor;
directing said vapor into an isolation chamber;
combining a quench fluid in a gas state with a quench fluid in a liquid
state to form a quench fluid stream, the quench fluid in the gaseous state
being the same substance as the quench fluid in the liquid state;
contacting said vapor contained in said isolation chamber with said
quench fluid stream, said quench fluid stream cooling said vapor to produce
the nano-particles in a carrier stream; and
removing said nano-particles from said isolation chamber.
The Examiner relies upon the evidence in these references (Ans. 3):
Sabacky 4,555,387 Nov. 26, 1985

Masterton, “The Atmosphere,” Chemical Principles, p. 404 (Philadelphia:
W.B. Saunders Company, 1977).
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 12 through 20 and 22
through 26 over Sabacky in view of Masterton.1 App. Br. 13; Ans. 3.
The threshold issue in this appeal is whether Appellant has shown that
Sabacky would not have disclosed a method for producing nano-particles
from a precursor material as claimed to one of ordinary skill in this art.
The plain language of representative independent claim 1 specifies a
method comprising at least, among other things, producing nano-particles by

1 The Examiner has withdrawn the ground of rejection under 35 U.S.C.
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Application 10/438,597
vaporizing a precursor material and contacting the vapor with a quench
stream in an isolation chamber. Appellant defines the term “nano-particles”
as “particles having average sizes less than about 1 micrometer (i.e.,
1 micron.” Spec. 1, ¶ 0003. Appellant discloses that suitable precursor
material can include MoO2 and MoO3, and the quench material is suitable
for effecting rapid cooling of the vaporized precursor material such as
cryogenic fluid. Spec., e.g., 6, ¶ 0022, and 15-16, ¶ 0050. We find no basis
in the claim language or in the disclosure in the Specification on which to
read such disclosure as limitations into claim 1. See, e.g., In re Zletz,
893 F.2d 319, 321-22 (Fed. Cir. 1989).
We find Sabacky would have disclosed to one of ordinary skill in this
art a method of “flash roasting of molybdenum sulfide concentrate
containing slag-forming constituents . . . [or] molybdenum sulfide to volatile
molybdenum trioxide [(MoO3)] and the separation thereof from contained
slag-forming constituents and off-gases.” Sabacky col. 1,
ll. 5-10; see also, e.g., Abstract, col. 2, ll. 32-54. In an embodiment, the
volatile MoO3 resulting from roasting molybdenum sulfide containing slag-
forming constituents, is “passed through a condensing chamber, the
temperature of which is controlled to above the condensing temperature of
the volatilized [MoO3] and below the volatilization temperature of volatile
metal impurity species present, such as metal oxide impurities, e.g., metal
molybdates, to effect separation of said volatile [MoO3] from said metal
impurities.” Sabacky col. 2, ll. 55-63. “The separated gaseous [MoO3] and
the off-gases (carbon oxides, water, nitrogen, excess O2 and SO2) are then

§ 112, second paragraph. Ans. 3; Office Action 2.
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Appeal 2008-4708
Application 10/438,597
conducted to a condensing chamber to effect condensation of the [MoO3]
and the recovery thereof, while the off-gases pass through this chamber.”
Sabacky col. 2, l. 64 to col. 3, l. 1. In the embodiment illustrated in Figure 2,
pipe 21 connected to a cyclone furnace is connected to condenser 24 in
which condensation of the emergent gases occurs via a mixture of water 26
and air 27 fed through water-atomizing nozzle 25. Sabacky col. 4, ll. 37-49.
“[T]he emergent gases [consist] of molybdic trioxide vapor, oxides of
carbon (CO2), H2O, N2, excess O2 and sulfur (SO2) and certain volatile metal
oxides (e.g., PbO) are separated from the gangue components of silica, clays,
and non-volatile metal oxides (e.g., Fe2O3).” Sabacky col. 4, ll. 50-56.
Similarly, in the embodiment illustrated in Figure 3, “products of reaction
being drawn off [from cyclone furnace 40] through condenser 41 into which
a water-air mixture is sprayed via atomizer 42 to control the temperature of
condenser 41;” “[t]he reaction products are conducted via line 43 to cyclone
condenser 44, the temperature of which is below the sublimation
temperature of” MoO3; and the MoO3 “condenses and provides a product
underflow 45, while the gases with entrained solids are drawn off the top 46
of the condenser and sent to baghouse 47 where the finer particles of the
sublimated product are removed.” Sabacky col. 6, ll. 18-34 (numeral
emphasis omitted); see also col. 7, ll. 3-19. Sabacky further illustrates a
system in Figure 6 in which volatile MoO3 is passed to condensing chamber
102, cooled and condensed by an air and water quench. Sabacky col. 9, l. 35
to col. 10, l. 3. Sabacky does not disclose the average size of the MoO3
particles produced by the disclosed methods.
A discussion of Masterton is unnecessary to our decision.
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Appeal 2008-4708
Application 10/438,597
Appellant discloses “that while sublimation furnaces are currently
used to produce highly purified MoO3 powder (conventionally referred to as
sublimed molybdic oxide), the particles comprising the resulting powder
produced by currently used sublimation processes are considerably larger
than the nano-sized particles produced with the method and apparatus of the
present invention.” Spec. 9, ¶ 0031.
Appellant contends that Sabacky’s methods do not produce nano-
particles and point to the disclosure at ¶ 0031 of the Specification as
evidence that methods such as those of Sabacky do not do so. App. Br. 21.
On this record, we agree with Appellant that Sabacky would not have
disclosed a method for producing nano-particles from a precursor material as
claimed to one of ordinary skill in this art. Indeed, the Examiner has not
adduced evidence or scientific reasoning establishing that one of ordinary
skill in this art following Sabacky’s method which recovers MoO3 particles
from a vaporized precursor material using a quench step, would have arrived
at nano-particles of MoO3 as required by the claims and not larger particles
of MoO3. Such evidence or scientific reasoning is necessary because
Sabacky does not characterize the MoO3 particles produced, and while the
claims are not so limited, we note that neither the molybdenum sulfide
concentrate containing slag-forming constituents and the molybdenum
sulfide precursor material nor the water and air quench material used by
Sabacky are similar in any respect to the MoO2 and MoO3 precursor
materials and the cryogenic liquid quench materials disclosed by Appellant
to result in particles of MoO3. Cf., e.g., KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741 (2007) (“it can be important to identify a reason that would
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Application 10/438,597
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does”); In re Rouffet, 149
F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at
appellant’s claimed invention has not been explained).
Accordingly, in the absence of a prima facie case of obviousness
established by the Examiner, we reverse the ground of rejection of the
appealed claims under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.
REVERSED

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