Ex Parte Whitcomb et al

Patent Trial and Appeal Board

May 27, 2016

13110977 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/110,977 05/19/2011
70523 7590
Carestream Health, Inc.
ATTN: Patent Legal Staff
150 Verona Street
Rochester, NY 14608
05/31/2016
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.
95105 4592
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAILDATE DELIVERY MODE
05/31/2016 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)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. WHITCOMB, WILLIAM D. RAMSDEN, and
DOREEN C. LYNCH
Appeal2014-009933
Application 13/110,977
Technology Center 1700
Before CHUNG K. PAK, PETERF. KRATZ, and GEORGE G. BEST,
Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal1under35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-5, 8-10, and 21-23. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a method of making a
metal nano wire from a reducible metal ion. 2
1 Appellants state Carestream Health, Inc. is the real party in interest (Br. 1 ).
2 Appellants state that "[ n Jo appeals or interferences are known which will
directly affect or be directly affected by or have bearing on the Board's
decision in the pending appeal" (Br. 1 ). However, this statement may not be
complete and/or maintained up to date. For instance, the statement does not
apprise the Board of other appeals involving matters/issues that could have
Appeal2014-009933
Application 13/110,977
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A method comprising:
providing at least one first composition comprising a first
molar quantity of at least one first reducible metal ion; and
reducing the at least one first reducible metal ion to at
least one first metal nanowire in the presence of a second molar
quantity of at least one second metal ion comprising tin in its
+ 2 oxidation state,
wherein the ratio of the second molar quantity to the first
molar quantity is from about 0. 0001 to about 0 .1.
The Examiner relies on the following prior art as evidence in rejecting
the appealed claims:
Brandes
Wang
US 2004/0086646 Al
US 2009/0196788 Al
May 6, 2004
Aug. 6,2009
The Examiner maintains the following grounds of rejection:
Claims 1-5, 8-10, and 21-23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wang in view of Brandes.
We reverse. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
been presumed close enough to merit identification in the Appeal Brief, such
as Appeal No. 2015-000064 (Board Decision mailed May 13, 2016), which
involved a provisional rejection of the appealed claims of the Application for
Patent involved in that appeal (Application No. 13/449,354; Notice of
Appeal filed April 15, 2014) on the ground of non-statutory obviousness
type double patenting over the claims of the subject Application (See Board
Decision in Appeal No. 2015-000064, n. 2).
2
Appeal2014-009933
Application 13/110,977
Wang is directed to a method of producing silver nanostructures, such
as nanowires via the solution based "polyol process" wherein "the polyol
serves as a solvent for the silver compound as well as a solvent for the
reaction (i-f 26; see i1 25). Wang teaches that polyvinyl pyrrolidone (PVP)
can be employed as an organic protective agent in the polyol synthesis of
nanowires to prevent sintering (particle agglomeration) and permits
production of the desired nanostructure (i1i195-98). Furthermore and as
found by the Examiner, Wang teaches that PVP can also function as a
supplemental reducing agent in the reaction solution (Ans. 2; Wang i-fi-f 145-
147).
The Examiner has determined that Wang does not teach adding Sn ion
in its +2 oxidation state to the reaction solution (composition) (id.). The
Examiner turns to Brandes and finds that Brandes teaches that a tin
compound in such an oxidation state "can be used as a reducing agent to
reduce silver compound in solution (section 30)" (Ans. 3).
Based thereon, the Examiner maintains that
[a ]bove references in combination make clear that PVP
and Sn(II) compound have been individually used [as] a
reducing agent to reduce silver compound in solution. It is
obvious to combine two compositions each of which is taught
by prior art to be useful for same purpose; idea of combining
them flows logically from their having been individually taught
in the prior art. The combination of active ingredient with the
same character is merely the additive effect of each individual
component. See In re Kerkhoven, 205 USPQ 1069 (CCPA
1980). Therefore, it would have been obvious to one of
ordinary skill in the art at the time of invention to combine the
Sn(II) compound of Brandes et al. with the PVP of Wang et al.
with expected success.
(Ans. 3.)
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Appeal2014-009933
Application 13/110,977
As argued by Appellants, however, the Examiner has not established
that the stannous compounds of Brandes that are used as part of a silver
colloid solution in activating pickled surfaces of a substrate prior to an
electroless metal plating step have the same or equivalent functionality or
purpose as the PVP organic protective agent of Wang in Wang's polyol
process for producing silver nanowires (Br. 4--5).
Consequently, the Examiner has not established an apparent reason
for the proposed modification of Wang based on the combined teachings of
the applied prior art. As stated in KSR Int'!. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007), "'[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness"' (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
The Examiner has not carried the burden to fully address the
differences between the teachings of each of the applied prior art references
from each other in proposing their combination in an attempt to establish the
obviousness of the claimed subject matter and adequately explain why,
regardless of the differences, one of ordinary skill in the art would have been
led by the disparate teachings of Brandes and Wang to make the
modifications of Wang's silver nanowire production method that are
necessary to yield a method that would correspond to the method required
by Appellants' claim 1 and with a reasonable expectation of success in so
doing.
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants' claims. See In re Warner, 379 F.2d
1011, 1017 (CCP A 1967) ("A rejection based on section 103 clearly must
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Appeal2014-009933
Application 13/110,977
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art"). Accordingly, we do not
sustain the Examiner's rejection.
CONCLUSION
The Examiner's decision to reject the appealed claims is reversed.
REVERSED
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