Ex Parte Whitcomb et al

Patent Trial and Appeal Board

Sep 21, 2016

14013135 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/013,135 08/29/2013
70523 7590
Carestream Health, Inc.
ATTN: Patent Legal Staff
150 Verona Street
Rochester, NY 14608
09/22/2016
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.
95107A 1206
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAILDATE DELIVERY MODE
09/22/2016 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. L YNCH1
Appeal2015-000959
Application 14/013, 13 5
Technology Center 1700
Before CHUNG K. PAK, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants timely appeal under 35 U.S.C. § 134(a) from a rejection2
of claims 1-9. (App. Br. 2.)3 We have jurisdiction. 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest is identified as Carestream Health, Inc. (Appeal
Brief, filed May 21, 2014 ("App. Br."), 1.)
2 Final Office Action mailed January 29, 2014 ("Final Office Action," cited
as "Final Act.").
3 No Reply Brief has been filed.
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OPINION
A. Introduction4
The subject matter on appeal relates to using "a mixture of metals or
metal ions" to "control the aspect ratios of silver nanowires" made from
compounds such as silver nitrates. (Spec. 4, 11. 16-18.) According to the
'13 5 Specification, "[ n ]anowires made in the presence of such as mixture of
metals or metal ions may be thicker than other nanowires and may be useful
in devices requiring high electrical current densities." (Id. at 4, 11. 18-20.)
Representative claim 1 recites:
1. A method of producing metal nanowires with reduced
nanoparticle coproduction comprising:
providing a composition comprising:
a first molar quantity of at least one first reducible metal
10n,
a second molar quantity of at least one second metal or
metal ion, said at least one second metal or metal ion
comprising germanium or an ion of germanium, and
a third molar quantity of at least one third metal or metal
ion, said at least one third metal or metal ion comprising tin or
an ion of tin; and
reducing the at least one first reducible metal ion to at
least one first metal nanowire,
wherein the ratio of ( 1) the sum of the second molar
quantity and the third molar quantity to (2) the first molar
quantity is from about 0.0001 to about 0.1.
(Claims Appendix, App. Br. 18.)
The Examiner maintains the following grounds of rejection: 5
4 Application 14/013,135, Nanowire Preparation Methods, Compositions,
and Particles, filed August 23, 2013. We refer to the'" 135 Specification,"
which we cite as "Spec."
5 Examiner's Answer mailed July 11, 2014 ("Ans.").
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Application 14/013, 13 5
A: Claims 1-8 stand rejected under
35 U.S.C. § 103(a) in view ofWang,6 Agrawal,7 and
Brandes.8
B: Claim 9 stands rejected under 35 U.S.C. § 101 for
statutory double patenting over claim 1 of U.S. Patent
No. 8,613,888.9
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejection A: Claim 110
The Examiner finds, and Appellants do not dispute, that Wang
discloses a method to produce silver nanowires based on a reduction reaction
of silver nitrate. (Final Act. 2 (citing various portions of Wang including
examples 6-9 disclosed in Wang); App. Br. 3.) Although the Examiner
acknowledges that Wang does not disclose a second molar quantity of a
second metal or metal ion comprising germanium or an ion of germanium
and a third molar quantity of at least one third metal or metal ion comprising
6 Yuliang Wang & Janet Cravens Dickerson, Methods for the Production of
Silver Nanowires, U.S. Patent Application Publication No. 2009/0196788
A 1, published August 6, 2009 ("Wang").
7 Anoop Agrawal & John P. Cronin, Metal Coatings, Conductive
Nanoparticles and Applications of the Same, U.S. Patent Application
Publication No. 2010/0002282 Al, published January 7, 2010 ("Agrawal").
8 Mariola Brandes et al., Method for Electroless Metal Plating, U.S. Patent
Application Publication No. 2004/0086646 Al, published May 6, 2004
("Brandes").
9 David R. Whitcomb et al., Nanowire Preparation Methods, Compositions,
and Articles, U.S. Patent No. 8,613,888 B2, issued December 24, 2013
('" 888 Patent").
10 Claims 2-8 stand or fall with claim 1. (App. Br. 2.)
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Application 14/013, 13 5
tin or anion of tin as recited in claim 1, the Examiner finds, and Appellants
do not dispute, that Agrawal teaches using "[ s ]tarting chlorides" such as
"GeCb" to "form [] nanowires" which may include "alloys of silver." (Final
Act. 2 (citing Agrawal ii 30); App. Br. 4.) Appellants also do not dispute the
Examiner's finding that Brandes discloses preparing a "solution of colloidal
silver ... by mixing a solution containing silver ions and a solution
containing stannous (Sn(II)) ions" to reduce the "silver compound."
(Brandes ii 33; see Final Act. 3; App. Br. 2-7.) Based on the combined
teachings of all references (namely, Wang, Agrawal, and Brandes) including
their disclosures of the concentration of each reactant which may affect the
efficiency and other attributes of the reduction reaction, the Examiner finds
that a skilled artisan would have had the routine skill to discover an optimum
value of the recited molar quantities. (Final Act. 3--4.)
Appellants argue that the Examiner reversibly erred in establishing a
prima facie case of obviousness because Agrawal is "directed to producing
silver alloy nanowires" whereas Wang is directed to producing silver
nanowires. (App. Br. 4.) According to Appellants, "because silver alloy
nanowires are not silver nanowires" and the "silver-germanium alloy
nanowires of the Examiner's proposed process would ... have lower
conductivity than silver metal," Wang and Agrawal are not combinable as
the combined product would be unsatisfactory to the intended purpose of
producing silver nanowires. (Id. at 5 (citing Declaration I ii 32).) 11
Contrary to Appellants' argument, Agrawal in fact discloses that
"[ c ]onductive nanofibers made out of silver have been suggested for use as
11 Declaration of Dr. David R. Whitcomb submitted January 14, 2013
("Declaration I").
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transparent conductors and electrical connectors." (Agrawal iJ 18.)
Example 7 in Agrawal discloses the preparation of a "silver nanowire." (Id.
iJ 3 5.) Agrawal discloses certain enhancements to the conductive silver
nanowire including increased corrosion resistance. (Id. iii! 17, 18.) To
improve such conductive silver nanowire, Agrawal exemplifies adding Pd
and Ni and starting chlorides, such as GeCb, to form silver alloy nanowires
having increased corrosion resistance and hardness. (Id. iii! 17, 18, 30, 35.)
On this record, Appellants do not point us to evidence showing that the
mechanical improvement resulting from adding GeCb results in said "lower
conductivity" unsatisfactory for Wang's intended purpose.
All of the features of the secondary reference need not be bodily
incorporated into the primary reference and the skilled artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Because Wang and
Agrawal both teach ways to make silver nanowires and/or to improve the
mechanical properties of silver nanowires (and Appellants do not address the
teachings of Brandes), Appellants have not shown reversible error in the
Examiner's prima facie case of obviousness. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) ("[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.").
The declaration by co-inventor Dr. Whitcomb states: "If the rejection
is literally correct in saying that it would have been obvious to make silver
nanowires with improved hardness, as taught by Agrawal et al. (section
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0030), it is my reasoned opinion that there would be no reasonable chance of
success, because Agrawal et al. (section 0030) does not teach methods of
hardening silver nanowires." (Declaration I iJ 30 (emphases omitted).)
Dr. Whitcomb, however, does not present factual evidence (e.g., data,
scientific reasoning, etc.) to show that it is beyond a skilled artisan's skill to
apply the combined teachings of Wang, Agrawal, and Brandes to arrive at
the method recited in claim 1. See KSR 550 U.S. at 417 ("[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill."); see also In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991)
("[A]n expert's opinion on the ultimate legal issue must be supported by
something more than a conclusory statement."). Nor does Dr. Whitcomb
take into account Agrawal' s purpose of improving conductive silver
nanowires as indicated supra.
Dr. Whitcomb's conclusion that "modifying the method of Wang et
al. to produce silver-germanium nanowires instead of silver nanowires
would result in lowered conductivity of the nanowires" and thus "not []
suitable for the intended use of the silver nanowires of Wang et al." does not
specify, or cite to evidence in the record, the "intended use" of Wang. (See
Declaration I iii! 33, 34.)12 Without explaining what the "intended use" of
Wang might be and without explaining why Agarwal's disclosure regarding
enhancement of"[ c ]onductive nano fibers made out of silver [which] have
been suggested for use as transparent conductors and electrical connectors"
12 There are two paragraphs 33 as well as two paragraphs 34 in Declaration
I.
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(Agrawal iJ 18) would be inapplicable to Wang's method of producing silver
nanowires, no reversible error has been shown in the Examiner's prima facie
case of obviousness. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed.
Cir. 2003) ("In giving more weight to prior publications than to subsequent
conclusory statements by experts, the Board acted well within [its]
discretion."); see also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants discounting the
opinions expressed in the declarations.") (citations omitted).
We are also not persuaded because Appellants' arguments and the
statements in Declaration I are directed to limitations not recited in claim 1.
(App. Br. 7-8.) Claim 1, an open-ended claim for the production of "metal
nanowires," is not limited to silver nanowires and does not exclude silver
alloy nanowires. The recited "metal nanowires" are produced by "reducing
the at least one first reducible metal ion" which does not exclude silver
alloys. The '135 Specification in fact provides that the recited "first
reducible metal ion comprises at least one of: at least one coinage metal ion,
at least one ion of an element from IUP AC Group 11, or at least one ion of
silver." (Spec. 2, 11. 20-23.) Claim 1 also does not recite properties of the
metal nanowire such as conductivity or others that would exclude the metal
nanowire suggested by the applied prior art. Appellants' "arguments fail
from the outset because ... they are not based on limitations appearing in
the claims." See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
We are not persuaded that there lacks motivation to combine Wang
and Agrawal as asserted by Appellants at App. Br. 6. Wang discloses a
method to produce silver nanowires based on a reduction reaction of silver
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Application 14/013, 13 5
nitrate. (Wang iii! 272-339.) Agrawal discloses that "[c]onductive
nanofibers made out of silver have also been suggested for use as transparent
conductors and electrical connectors" and that "[ c ]oating with gold, and
alloying with other elements have been suggested to reduce corrosion."
(Agrawal iJ 18.) Other than repeating the argument that Agrawal does not
teach "methods for making silver nanowires," Appellants do not show
reversible error in the Examiner's findings or articulated reasoning. For
example, Appellants do not refute the Examiner's finding that the silver
nanowires taught in Wang does not exclude silver alloy nanowires. (See
App. Br. 6; Ans. 5.) Appellants do not refute the Examiner's finding that
Agrawal teaches using GeCb to "alter the physical, mechanical and
chemical properties of the nanowires." (Agarwal iJ 30; see App. Br. 6; see
also Ans. 5.) Appellants do not refute the Examiner's reasoning that a
skilled artisan would have found claim 1 obvious as it is no "more than the
predictable use of prior art elements according to their established functions"
based on the combined prior art teachings. See KSR at 417 ("If a person of
ordinary skill can implement a predictable variation [of a known work],
§ 103 likely bars its patentability."); (App. Br. 6; see also Ans. 5). We are
therefore not persuaded that the Examiner committed reversible error here.
Given that no reversible error has been identified in the Examiner's
prima facie case of obviousness, we now tum to Appellants' unexpected
results argument. "[T]he burden of showing unexpected results rests on he
who asserts them." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants presents declaration evidence13 showing that "the use of a mixed
13 Declaration of Dr. David R. Whitcomb submitted January 31, 2013
("Declaration II").
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Application 14/013, 13 5
tin-germanium catalyst system resulted in a larger yield of silver to
nanowires versus nanoparticles compared to use of either of the single
catalyst individually." (App. Br. 12.)
"If an applicant demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner, this
will generally establish that the evidence is commensurate with [the] scope
of the claims." In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citation
omitted). "[C]ommensurate in scope" means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
In this case, Appellants and declarant Dr. Whitcomb rely on
"Examples 3-5" in the '13 5 Specification to establish unexpected results.
(App. Br. 9; Declaration II ,-i,-i 10-27.) In Example 3, GeCb alone was used
to catalyze a reduction reaction of silver nitrate, and the "overall catalyst to
silver mole ratio was[] 0.006." (App. Br. 10; see Declaration II ,-i,-i 12-15.)
In Example 4, SnCb alone was used to catalyze the reduction reaction, and
the "overall catalyst to silver mole ratio was[] 0.006." (App. Br. 10; see
Declaration II ,-i,-i 16-21.) In Example 5, on the other hand, both GeCb and
SnCb were used to catalyze the reduction reaction, and the "overall catalyst
to silver mole ratio was [] 0.007." (App. Br. 11.)
Although the mole ratio in Example 5 is 0.007 which differs from the
ratio of 0.006 in Examples 3 and 4, Appellants consider it "essentially the
same as the ratios used in Examples 3 and 4" - although Appellants do not
explain why the difference of 0.001 should be overlooked particularly in
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light of the range "from about 0.0001 to about 0.1" recited in claim 1. (App.
Br. 11; see Declaration II iii! 16-26.) Based on optical micrographs of the
end products from these examples, Appellants assert that "the use of a mixed
tin-germanium catalyst system resulted in a larger yield of silver to
nanowires versus nanoparticles compared to use of either of the single
catalysts individually." (App. Br. at 12 (citing Declaration II 27-28).)
To the extent that Appellants argue unexpected results based on
Example 5 using a combined Ge/Sn to silver ratio of 0.007 as compared to a
different ratio of 0.006 in Examples 3 and 4, Appellants have not shown that
the ratio of 0.007 is applicable to the entire range of "about 0.0001 to about
0.1" ratio recited in claim 1. Appellants do not explain why a single data
point of 0.007 may be applicable to show unexpected results for the entire
recited range having a lower limit of "about 0.0001" and an upper limit of
"about 0.1" both of which differ from 0.007 by orders of magnitude.
Moreover, Appellants have not shown that these examples - all directed to
the reduction of silver nitrate (AgN03) - are applicable to show unexpected
results for the entire group of "first reducible metal ion" recited in claim 1
which may include "coinage metal ion," "an element from IUPAC Group
11," and "one ion of silver." (See Spec. 2, 11. 20-23.)
Absent evidence showing a reasonable basis for concluding that the
untested embodiments encompassed by the claims would behave in the same
manner as the tested embodiments, we are not persuaded that the Examiner
committed reversible error in finding that the evidence is not commensurate
in scope with claim 1. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) ("Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range. Alternatively
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Harris needed to narrow the claims."); see also Jn re Greenfield, 571 F.2d
1185, 1189 (CCPA 1978) ("Establishing that one (or a small number of)
species gives unexpected results is inadequate proof, for 'it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support."')
(quoting Jn re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Rejection B: Claim 9
Claim 9 depends from claim 1 and additionally recites "wherein the at
least one first metal nanowire comprises one or more silver nanowires." The
Examiner rejects claim 9 based on claim 1 of the '888 Patent for statutory
double patenting under 35 U.S.C. § 101.
A comparison between claim 9 on appeal and claim 1 of the '888
Patent is provided in Table I below.
Claim 9 on appeal
1. A method of producing metal
nanovvires vvith reduced
nanoparticle coproduction
compnsmg:
providing a composition
compnsmg:
a first molar quantity of at least one
first reducible metal ion,
a second molar quantity of at least
one second metal or metal ion, said
at least one second metal or metal
Claim 1 of the '888 Patent
1. A method of producing silver
nanovvires vvith reduced
nanoparticle coproduction
compnsmg:
providing a composition
compnsmg:
a first molar quantity of silver ion,
a second molar quantity of at least
one second metal or metal ion, said
at least one second metal or metal . . . . . . . . . .
10n compnsmg germamum or an 10n 10n compnsmg germamum or an 10n
of germanium, and of germanium, and
a third molar quantity of at least one a third molar quantity of at least one
third metal or metal ion, said at least third metal or metal ion, said at least
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one third metal or metal ion
comprising tin or an ion of tin; and
reducing the at least one first
reducible metal ion to at least one
first metal nanowire,
9. wherein the at least one first
metal nanowire comprises one or
more silver nanowires.
wherein the ratio of ( 1) the sum of
the second molar quantity and the
third molar quantity to (2) the first
molar quantity is from about 0.0001
to about 0 .1.
one third metal or metal ion
comprising tin or an ion of tin; and
reducing the silver ion to silver
nanowire,
wherein the ratio of ( 1) the sum of
the second molar quantity and the
third molar quantity to (2) the first
molar quantity is from about 0.0001
to about 0 .1.
Table I. Comparison of claim 9 on appeal and claim 1 of the '888 patent
Section 101 prohibits two patents from issuing from the same
invention. In re Vogel, 422 F.2d 438, 441(CCPA1970). The Vogel court
held: "A good test, and probably the only objective test, for 'same
invention,' is whether one of the claims could be literally infringed without
literally infringing the other. If it could be, the claims do not define
identically the same invention." MPEP 804 further states that "[a] reliable
test for double patenting under 35 U.S.C. 101 is whether ... there [is] an
embodiment of the invention that falls within the scope of one claim, but not
the other? If there is such an embodiment, then identical subject matter is
not defined by both claims and statutory double patenting would not exist."
In this case, Appellants argue that claim 1 of the '888 Patent is
narrower in scope than that of the open-ended claim 9 because claim 9 "may
include, in addition to silver nanowires, other metal nanowires that are not
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silver nanowires." (App. Br. 16.)14 We agree and reverse the statutory type
double patenting rejection of claim 9.
C. Order
It is ORDERED that the obviousness rejections of claims 1-8 are
affirmed.
It is ORDERED that the statutory double patenting rejection of
claim 9 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED-IN-PART
14 Appellants submit that a terminal disclaimer has been filed in this case.
(App. Br. 16.)
13