Ex Parte Whitcomb

Patent Trial and Appeal Board

May 13, 2016

13449354 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/449,354 04/18/2012
70523 7590
Carestream Health, Inc.
ATTN: Patent Legal Staff
150 Verona Street
Rochester, NY 14608
05/13/2016
FIRST NAMED INVENTOR
David R. Whitcomb
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.
95169 9032
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAILDATE DELIVERY MODE
05/13/2016 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)
Appeal2015-000064
Application 13/449,354
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. WHITCOMB
Appeal2015-000064
Application 13/449,354
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals 1 under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1and5-9. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
According to the Appellant, the real party in interest is Carestream
Health, Inc. Appeal Br. 1.
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Application 13/449,354
STATEMENT OF CASE2
Appellant describes the present invention as relating to the controlled
preparation of silver nanowires having desired lengths and widths. Spec.
1: 15-16. N anowires or other nano structures could be incorporated in a
variety of electronic devices including, for example, electronic displays,
portable telephones, and solar cells. Spec. 5:18-26. Claim 1, reproduced
below, is the only independent claim on appeal and is illustrative of the
claimed subject matter:
1. A method comprising:
providing a composition comprising:
at least one first compound comprising at least one
first silver ion;
at least one second compound comprising at least
one second metal or metal ion differing in atomic number
from said at least one first silver ion, said at least one
second metal or metal ion comprising at least one element
from IUP AC Group 15, and
at least one solvent; and
reducing the at least one first silver ion to at least
one first silver nanowire,
2 The Appellant states that "No appeals or interferences are known
which will directly affect or be directly affected by or have bearing on the
Board's decision on the pending appeal." Appeal Br. 1. While this
statement appears to be accurate, it is incomplete because Appellant has
filed several appeals on other applications with claims similar enough to the
claims at issue so as to provoke the Examiner's double-patenting rejections.
See, e.g., Ex parte Whitcomb, Appeal 2014-003298 (PTAB Nov. 5, 2015);
Ex parte Zhang, Appeal 2014-001078 (PTAB Dec. 28, 2015); Ex parte
Whitcomb, Appeal 2014-003868 (PTAB Dec. 29, 2016). We do not reject
Appellant's brief as non-compliant in this instance, but we ask that
Appellant, in the future, please take care to identify appeals that "may be
related to" other pending appeals. 37 C.F.R. § 41.37(c)(ii).
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Application 13/449,354
wherein the composition has a ratio of the total
moles of the at least one second compound to the at least
one silver ion from about 0.0001 to about 0.1.
Appeal Br. 3 10 (Claims Appendix).
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Goldstein
Wang et al.
(hereinafter "Wang")
US 6,645,444 B2 Nov. 11, 2003
US 2009/0196788 Al Aug. 6, 2009
REJECTIONS
The Examiner made the following rejections:
Rejection 1. The Examiner rejected claims 1 and 5-9 under 35 U.S.C.
§ 103 as unpatentable over the combination of Wang in view of Goldstein.
Final Act. 2.
Rejection 2. The Examiner provisionally rejected claims 1 and 5-9 on
the ground of non-statutory double patenting over co-pending Application
No. 13/449342 (claims 1, 3---6, 8, and 9) in view of Goldstein. Id. at 5.
Rejection 3. The Examiner provisionally rejected claims 1 and 5-9 on
the ground of non-statutory double patenting over co-pending Application
No. 13/290062 (claims 1, 3, and 5) in view of Goldstein. Id.
Rejection 4. The Examiner provisionally rejected claims 1 and 5-9 on
the ground of non-statutory double patenting over co-pending Application
No. 13/110977 (claims 1-5, 8-10, and 21-23) in view of Goldstein. Id.
3 In this decision, we refer to the Final Office Action appealed from,
filed February 4, 2014 ("Final Act."), the Appeal Brief filed May 22, 2014
("Appeal Br."), and the Examiner's Answer filed July 11, 2014 ("Ans.").
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Application 13/449,354
Rejection 5. The Examiner provisionally rejected claims 1 and 5-9 on
the ground of non-statutory double patenting over co-pending Application
No. 13/442949 (claims 1-3, 6, 7, and 11-13) in view of Goldstein. Id. at 6.
Rejection 6. The Examiner provisionally rejected claims 1 and 5-9 on
the ground of non-statutory double patenting over co-pending Application
No. 13/326356 (claims 1, 4, and 8-9) in view of Goldstein. Id.
Rejection 7. The Examiner provisionally rejected claims 1 and 5-9 on
the ground of non-statutory double patenting over co-pending Application
No. 13/275496 (claims 1and5-9) in view of Goldstein. Id.
Rejection 8. The Examiner provisionally rejected claims 1 and 5-9 on
the ground of non-statutory double patenting over co-pending Application
No. 13/453103 (claims 1, 5-9) in view of Goldstein. Id. at 7.
ANALYSIS
Rejection 1. The Examiner explains that Wang teaches reducing
silver ions to nanowire in a solvent comprising polyol. Final Act. 2. Wang,
however, does "not expressly teach the claimed second compound
comprising the claimed second metal ion." Id. The Examiner also explains
that Goldstein discloses that bismuth (an IUPAC group 15 element) in the
form of bismuth chloride could be utilized as a metal element in a method
for nanocrystal synthesis. Id. at 2. The Examiner then concludes that it
would have been obvious to add bismuth chloride as a second metal to the
process of Goldstein because the addition "would lead to expected success
of silver nanowire synthesis." Id. at 3.
A prima facie case of obviousness requires establishing an apparent
reason to combine known elements to arrive at the claimed invention. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). On the present
record, we agree with Appellant (Appeal Br. 4---6) that the Examiner has not
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Application 13/449,354
adequately articulated a reason to combine the Wang and Goldstein
references. As Appellant explains, the Examiner does not explain "the
logical connection between Goldstein's nanocrystal synthesis process and
Wang et al. 's silver nanowire synthesis process." Id. at 5; see also Ans. 6-8.
One of skill in the art would understand the Goldstein reference standing
alone (without bismuth) as teaching successful silver nanowire synthesis; the
Examiner does not adequately explain why introducing bismuth would
improve the synthesis of Goldstein or why a person of skill in the art would
be inclined to introduce bismuth to Goldstein's process based upon the
references' teachings. Accordingly, we do not sustain the Examiner's first
rejection of independent claim 1 or dependent claims 5-9.
Rejections 2--8. For each of these rejections, the Examiner
provisionally rejects all pending claims on the ground of non-statutory
double patenting based upon combining an application that was co-pending
at the time of the Final Rejection (February 4, 2014) and Goldstein. For
each rejection, the Examiner explains that the claims recite a similar process
of making silver nanowire "with the exception of the presence of IUP AC
Group 15 metal element" which "would be cured by the disclosure of
Goldstein, as set forth above [in the explanation for combining Wang and
Goldstein]." Final Act. 5-7.
With respect to Rejections 2, 3, 6, 7, and 8, the applications issued as
U.S. Patent Nos. 9,283,623, 9,278,390, 8,613,887, 8,613,888, and 8,815,151,
respectively. None of the claims were amended after the February 4, 2014,
Final Office Action. None of the issued claims teach or suggest an IUPAC
Group 15 metal element. For the reasons we provide with respect to
Rejection 1 above, we agree with Appellant that the Examiner has not
adequately articulated a reason to combine the allowed claims with
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Application 13/449,354
Goldstein. Appeal Br. 7-9. Thus, on the present record, we do not agree
with the Examiner's conclusion that claims 1 and 5-9 of the present
application are patentably indistinct, and we do not sustain these rejections.
With respect to Rejections 4 and 5, the Application Nos. 13/110977
and 13/442949 remain pending. (We note that an issue notification was
provided for Application No. 13/442949 on April 13, 2016.) The claims of
these applications have not been amended after February 4, 2014.4 None of
the claims presently teach or suggest an IUP AC Group 15 element. Again,
for the reasons we provide with respect to Rejection 1, we agree with
Appellant that the Examiner has not adequately articulated a reason to
combine these claims with the teachings of Goldstein. Appeal Br. 7-9.
Thus, on the present record, we do not agree the Examiner's conclusion that
claims 1 and 5-9 of the present application are patentably indistinct, and we
do not sustain these rejections.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1and5-9.
REVERSED
4 Our assessment of whether claims have been amended is as of May
10, 2016. To the extent claims are amended, our decision will no longer
apply.
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