Ex Parte Whitcomb

Patent Trial and Appeal Board

Nov 5, 2015

13290062 (P.T.A.B. Nov. 5, 2015)

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.
13/290,062 11/05/2011 David R. Whitcomb 95161 3088
70523 7590 11/05/2015
Carestream Health, Inc.
ATTN: Patent Legal Staff
150 Verona Street
Rochester, NY 14608
EXAMINER
SU, XIAOWEI
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
11/05/2015 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
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID R. WHITCOMB
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Appeal 2014-003298
Application 13/290,062
Technology Center 1700
——————
Before DONNA M. PRAISS, JEFFREY W. ABRAHAM, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) (2006) from the
Examiner’s final rejection of claims 1, 3, and 5 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b)(1) (2012).
We REVERSE.
BACKGROUND
Appellant’s application is directed to forming silver nanowires from a
mixture that includes silver ions and non-redox active metals or metal ions,

1 According to Appellant, the Real Party in Interest is Carestream Health,
Inc. Appeal Br. 1.
Appeal 2014-003298
Application 13/290,062
2
such as aluminum, from Group 13 of the IUPAC periodic table. See Appeal
Br. 7. Independent claim 1 is representative:
1. A method comprising:
providing a composition comprising at least one silver
ion and at least one second non-redox active metal or
metal ion, the at least one second non-redox active metal
or metal ion differing in atomic number from the at least
one silver ion and comprising at least one ion or element
from International Union of Pure and Applied Chemistry
(IUPAC) Group 13 other than indium or an ion of
indium; and
reducing the at least one silver ion to at least one first
silver nanowire,
wherein the ratio of the total moles of the at least one
second non-redox active metal or metal ion to the total
moles of the at least one silver ion is from about 0.0001
to about 0.1.
Id. (emphasis added). Claims 3 and 5 depend from claim 1. Id. Claim 3
specifies that the second non-redox active metal or metal ion is an ion “in its
+3 oxidation state,” and claim 5 specifies that the second metal or ion is
aluminum. Id. According to Appellant, “[c]laims 1, 3, and 5 will stand or
fall as a single group.” Id. at 2.
THE REJECTIONS
I. Claims 1 and 52 under 35 U.S.C. § 103(a)3 as being unpatentable
over Xinling Tang & Masaharu Tsuji, Syntheses of Silver Nanowires in
Liquid Phase, in Nanowires Science and Technology 25–42 (Nicoleta Lupu

2 Other claims that were part of this rejection were canceled by Amendment
dated Aug. 23, 2013 and entered by the Examiner September 5, 2013. See
Appeal Br. 1, 7.
3 Rejections are based on 35 U.S.C. § 103(a) (2006), amended by Leahy-
Smith America Invents Act, Pub. L. No. 112-29 (2011).
Appeal 2014-003298
Application 13/290,062
3
ed., 2010) [hereinafter Tang] in view of US 6,645,444 B2 [hereinafter
Goldstein] (issued Nov. 11, 2003). Final Act. 4–5.
II. Claim 3 under 35 U.S.C. § 103(a) as being unpatentable over Tang
in view of Goldstein, as evidenced by Wikipedia, Aluminum Chloride,
http://en.wikipedia.org/wiki/Aluminum_chloride (last visited Feb. 9, 2013).
Final Act. 5–6.
DISCUSSION
The Examiner finds that Tang teaches that when silver nanowires are
produced in a process that includes NaCl as a non-redox active additive, “the
functional part in NaCl for controlling silver nanowire growth is the Cl−
ion.” Answer 4 (citing Tang 28). The Examiner finds that Tang “is silent
about using [a] metal ion of [an] element from Group 13,” but Goldstein
teaches that “aluminum chloride is one kind of chloride salt that can be
present during nanocrystal synthesis to provide chloride ions.” Final Act. 5.
Therefore, the Examiner concludes that “it would be obvious to one of
ordinary skill in the art [that] replac[ing] sodium chloride with aluminum
chloride as taught by Goldstein in the process of Tang et al. would lead to
expected success of silver nanowire synthesis.” Id. (citing MPEP
§ 2144.06).
In further support of the rejections, the Examiner cites Jinting Jiu et
al., Preparation of Ag Nanorods with High Yield by Polyol Process, 114
Materials Chemistry & Physics 333 (2009), which investigates the formation
of nanowires in the presence of FeCl3, NaCl, ZnCl2, NiCl2, CoCl2, and
CuCl2, and determines that “Cl− ions might be the crucial factor for the
formation of nanorods.” Answer 5 (citing Jiu et al. at 335–36) (emphasis
omitted). The Examiner also refers to a table of standard reduction
Appeal 2014-003298
Application 13/290,062
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potentials for various metals, and notes that the potential for Al3+ is more
negative than Fe3+, which according to Jiu et al. is not reduced in the silver
nanowire process. Id. at 7 (citing Jiu et al. at 338). Therefore, the Examiner
finds that one of skill in the art would have known that the Al3+ in AlCl3
would not be redox active if it replaces Na+ in the silver nanowire formation
process disclosed by Tang. Id. at 7–8.
Appellant argues that Goldstein is the only reference cited by the
Examiner that discusses AlCl3 in the context of silver nanocrystal formation.
Reply Br. 7. However, according to Appellant, Goldstein teaches “that
modification of the process of Tang et al. by replacing sodium chloride ‘with
aluminum chloride as taught by Goldstein’ would be expected to produce
metal alloys or metal ion doped nanocrystals, rather than silver nanowires.”
Id. at 5 (citing Goldstein 2:26–3:32). Moreover, Appellant argues that the
Goldstein process differs significantly from that of Tang, because Goldstein
requires complexing between the prominent metal (e.g., silver) and an
organic ligand. See id. at 5, 7. According to Appellant, the Examiner does
not explain why the teachings of Goldstein “would apply to a completely
different process, such as that proposed in the rejection.” Id. at 5.
Appellant also argues that the presumed significance of Cl− ions in the
nanowire formation process does not mean that one of ordinary skill in the
art would have considered AlCl3 to be functionally equivalent to NaCl in the
Tang process. See Reply Br. 2–3. Appellant cites Srichandana Nandikonda
& Edward W. Davis, Effects of Salt Selection on the Rapid Synthesis of
Silver Nanowires, Abstract INOR0299, 240th ACS National Meeting,
Boston, MA (Aug. 23, 2010) as teaching that chlorides of Mg2+ and Mn2+
were superior to chlorides of Na+, K+, Ca2+, and Cu2+. See Reply Br. 3.
Appellant also cites Srichandana Nandikonda, Microwave Assisted
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Application 13/290,062
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Synthesis of Silver Nanorods (Aug. 9, 2010) (unpublished M.S. thesis,
Auburn University) as teaching “that NaCl, KCl and MnCl2 gave good
results for the synthesis of silver nanorods compared to the other salts.”
Reply Br. 3. Appellant argues that this effectively undermines the
Examiner’s “assertion that [the] chloride ion and not the meal ion [is] crucial
for nanowire growth.” Id.
We have carefully considered the Examiner’s findings regarding the
use of Al3+ ions in Goldstein, and the role of Cl− ions in the process
described by Tang. However, the preponderance of the evidence on this
record does not support a conclusion that Al3+ would have been an obvious
replacement for Na+ in the nanowire formation process described by Tang.
Goldstein teaches that nanocrystals may be formed by mixing
inorganic salts composed of metal ions such as silver and aluminum, and
anions such as chloride. Goldstein 3:1–20. Goldstein teaches that two metal
ions may be “reduced simultaneously so as to form a metal alloy or metal
ion doped metal nanocrystal.” Id. at 3:21–23. The formation of nanowires
is aided by complexing the predominant metal ion (e.g., Ag+) with an
organic ligand, and the uncoordinated dopant metal (e.g., Al3+) is “reduced
in concert with the predominant metal ion-ligand complex.” Id. at 3:26–28.
Thus, when AlCl3 is used to produce silver nanowires in Goldstein, the Al3+
ions are redox active. The teachings of Goldstein do not support the
conclusion that Al3+ would have been an obvious substitution for Na+ in a
process where the ion must be non-redox active.
Moreover, even if Cl− has a crucial role in forming nanowires, the
evidence on this record does not show that one of ordinary skill in the art
would have understood that all possible chloride salts are functionally
equivalent when used in the process described by Tang. According to the
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Nandikonda thesis, “several studies have found that significant control over
the rod morphology can be obtained in the ‘traditional’ process by utilizing
different cations.” Nandikonda, supra, at 18. In the process investigated by
Nandikonda, for example, “the alkali and alkali earth metal salts [showed]
better results compared to transition metal salts.” Nandikonda & Edwards,
supra, at 41; see also Nandikonda & Davis, supra (“The yield and aspect
ratio are affected by salt selection.”) The teachings of Tang and Jiu are
limited to alkali and transition metal salts, and neither reference teaches that
a metal ion from a different category, such as aluminum, would be a
functionally equivalent substitution.
Because the evidence on this record does not support a prima facie
case that Al3+ ions would have been an obvious substitution for Na+ ions in
the process of Tang, we reverse the Examiner’s rejection of claims 1, 3, and
5.
DECISION
The Examiner’s rejection of claims 1, 3, and 5 is reversed.
REVERSED
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