Ex Parte Yadav et al

Board of Patent Appeals and Interferences

Aug 27, 2010

10679611 (B.P.A.I. Aug. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAPESH YADAV and CLAYTON KOSTELECKY
____________

Appeal 2009-007053
Application 10/679,611
Technology Center 1700
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and
CATHERINE Q. TIMM, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 17 through 41, all of the claims pending in
the above-identified application.2 We have jurisdiction under 35 U.S.C. §§ 6
and 134.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

2 See page 4 of the Revised Appeal Brief (“App. Br.”) filed May 28, 2008.
Appeal 2009-007053
Application 10/679,611

2
STATEMENT OF THE CASE
The subject matter on appeal is directed to a screen printable
formulation comprising nanofillers having particular domain sizes and/or
aspect ratios. (See, e.g., claims 17, 24, 32, and 33.) The Specification
defines the screen printable formulation as including printing inks and
pastes. (See, e.g., the Abstract of the Disclosure.) The Specification also
states that the nanofiller used in the formulation “can be inorganic, organic,
or metallic, and may be in the form of powders, whiskers, fibers, plates or
films” (Spec. 8, para. 0029). According to paragraphs 0007 and 0037 of the
Specification:
“Domain size” as that term is used herein, refers to the
minimum dimension of a particular material morphology. In
the case of powders, the domain size is the grain size. In the
case of whiskers and fibers, the domain size is the diameter. In
the case of plates and films, the domain size is the thickness.

The term “aspect ratio” refers to the ratio of the
maximum to the minimum dimension of a particle. The term
“whisker” refers to any elongated particle (e.g., a particle
having an aspect ratio greater than one, and preferably at least
two).

Details of the appealed subject matter are recited in representative claims 17,
24, 32, and 333 reproduced from the Claims Appendix to the Revised Appeal
Brief as shown below:

3 Appellants do not argue any of the claims on appeal separately, but instead
focus their arguments on the limitations of claims 17, 24, 32, and 33 (e.g.,
App. Br. 9-14). Therefore, for purposes of this appeal, we select claims 17,
24, 32, and 33 to decide the propriety of the Examiner’s §§ 102(b) and
103(a) rejections set forth in the Answer. See 37 C.F.R. § 41.37(c)(1)(vii)
(“When multiple claims subject to the same ground of rejection are argued
Appeal 2009-007053
Application 10/679,611

3
17. A screen printable formulation comprising metallic fillers with
domain size less than 100 nanometers and an aspect ratio greater than
one.
24. A screen printable formulation comprising ceramic nanofillers
with domain size less than 100 nanometers and an aspect ratio greater
than one.
32. A screen printable formulation comprising nanofillers with
domain size less than 250 nanometers and the nanofillers comprise
copper.
33. A screen printable formulation comprising nanofillers with
domain size less than 100 nanometers and the nanofillers comprise
copper.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 2 of the
Answer:
Craig 4,292,029 Sep. 29, 1981
Alexander 4,944,985 Jul. 31, 1990
Nakayama 5,718,047 Feb. 17, 1998

Appellants seek review of the following grounds of rejection at page 8
of the Appeal Brief:
1) Claims 32, 33, 38, and 40 under 35 U.S.C. § 102(b) as
anticipated by the disclosure of Alexander;
2) Claims 39 and 41 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Alexander; and
3) Claims 17 through 31 and 34 through 37 under 35 U.S.C. §
103(a) as unpatentable over the combined disclosures of Alexander and
either Craig or Nakayama.

as a group by appellant, the Board may select a single claim from the group
of claims that are argued together to decide the appeal with respect to the
group of claims as to the ground of rejection on the basis of the selected
claim alone.”).

Appeal 2009-007053
Application 10/679,611

4
ISSUES AND CONCLUSIONS
With respect to the first two grounds of rejection, the dispositive
question raised by Appellants and the Examiner is: Has the Examiner erred
in finding that Alexander describes a screen printable formulation having a
nanofiller comprising copper with a domain size of less than 100 or less than
250 nanometers with sufficient specificity to constitute a description within
the purview of 35 U.S.C. § 102(b)? On this record, we answer this question
in the affirmative.
With respect to the third ground of rejection, the dispositive question
raised by Appellants and the Examiner is: Has the Examiner erred in
finding that the collective teachings of Alexander and either Craig or
Nakayama would have suggested a screen printable formulation, i.e., an ink,
comprising metallic or ceramic fillers having a domain size of less than 100
nanometers and an aspect ratio of greater than one within the purview of 35
U.S.C. § 103(a)? On this record, we answer this question in the negative.
RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988)(explaining the general evidentiary standard for proceedings
before the Office):
1. Alexander teaches ultra-fine particles having plating thereon, metal
powder of ultra-fine colloidal sized particles with cores or centers with a
dense and continuous plating of at least one metal, or metal articles having a
plurality of ultra-fine particles dispersed therein (col. 1, ll. 8-17).
2. Alexander teaches that the ultra-fine particles or dispersoids are
selected from silica, carbon, alumina, copper, nickel, iron, cobalt,
Appeal 2009-007053
Application 10/679,611

5
molybdenum, tungsten and alloys of these metals, or these with other water
insoluble metal silicates, metal oxides, complex oxides or other inert or non-
inert materials and have a diameter in the range of 5 to 500 nm when they
are substantially spherical in shape or colloidal (col. 6, ll. 21-40).
3. Alexander also teaches that ultra-fine particles or dispersoids may be
either crystalline or amorphous metals or ceramics, can be in the form of a
sphere, elongated particles or plate like particles depending on their usage
and preferably have a size in the range of 5 to 500 nanometers (col. 9, ll. 7-
17).
4. Alexander describes employing ultra-fine particles or dispersoids,
such as copper or silica, coated or plated with a corrosion resistant metal,
such as gold, in the manufacture of conductive paints, pastes or inks (col. 13,
ll. 41-52).
5. Alexander also teaches (col. 15, l. 64 to col. 16, l. 8) that:
Metallic inks involving noble metals are, today, commonly
used. These inks require discrete, constant sized and
substantially spherical particles in order to achieve good
performance. Silver composites containing silica can be
prepared in which there is little or no aggregation in the
structure. These materials are useful as metallic inks. Silica
particles can be obtained in a variety of sizes. “Ludox” from
E.I. duPont de Nemours and Company can be purchased in
sizes of 7, 12 or 22 nanometers. Colloidal silica can be grown
to larger sizes in aqueous solutions by heating under pressure as
has already been mentioned (see Iler’s book).

6. Alexander teaches that the sizes of the ultra-fine particles or
dispersoids vary depending on their usages and the composition of ultra-fine
particles or dispersoid being coated or plated (col. 8, ll. 16-41 and col. 13 to
col.15),
Appeal 2009-007053
Application 10/679,611

6
7. Appellants do not argue that the ultra-fine particles or dispersoids
taught by Alexander are not fillers (App. Br. 9-10).
8. Appellants do not dispute the Examiner’s finding that “it is ‘known in
the printing arts that inks, for example, are suitable in the formation of
printed matter’” (Compare Ans. 7 with App. Br. 11.)
9. Craig teaches that inorganic fillers having a particle size ranging from
5 to 500 nanometers and in the form of spheres, platelets, fibers, whiskers, or
particles of any regular or irregular shape in the context of dental restorative
coating compositions are known (col. 5 to col. 6, ll. 33-52).
10. Nakayama teaches a conductive paste used for screen printings, which
employs conductive fillers selected from copper, nickel, gold, silver or alloy
thereof in the form of fiber, whisker, or flake (col. 5, ll. 41-67).
ANALYSIS AND PRINCIPLES OF LAW
I. CLAIMS 32, 33, 38, AND 40 UNDER 35 U.S.C. § 102(b)
Under 35 U.S.C. § 102(b), anticipation is established only if “each
and every element as set forth in the claim is found, either expressly or
inherently, described in a single prior art reference.” Verdegall Bros., Inc. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). The single
prior art reference needs to describe each and every element as set forth in
the claim “with sufficient specificity to constitute a description thereof
within the purview of 35 U.S.C. § 102”. In re Schaumann, 572 F.2d 312,
315 (CCPA 1978).
Here, Alexander describes employing ultra-fine particles or
dispersoids, such as copper or silica, coated or plated with a corrosion
resistant metal, such as gold, in the manufacture of conductive paints, pastes
or inks. Alexander teaches that these ultra-fine particles or dispersoids have
Appeal 2009-007053
Application 10/679,611

7
a preferred size in the range of 5 to 500 nanometers. Alexander also teaches
that the sizes of ultra-fine particles or dispersoids may vary depending on
their usages and do not specify any particular sizes of the ultra-fine particles
or dispersoids made of copper used in conductive paints, pastes or inks. In
other words, Alexander discloses ultra-fine particles or dispersoids
corresponding to the claimed fillers used in a printable formulation, which
are made of copper in a size of 5 to 500 nanometers, partially overlapping
with the claimed filler particle size range of less than 100 or 250
nanometers. As our reviewing court stated in Atofina v. Great Lakes
Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006):
Titanium Metals [v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)]
stands for the proposition that an earlier species reference anticipates a
later genus claim, not that an earlier genus anticipates a narrower
species. Here, the prior art, …, discloses a temperature range of 100
to 500 °C which is broader than and fully encompasses the specific
temperature range claimed … of 330 to 450 °C. Given the
considerable difference between the claimed range and the range in
the prior art, no reasonable fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to anticipate
this limitation of the claim.”

Thus, we concur with Appellants the Examiner has not shown that
Alexander describes the claimed invention with sufficient specificity to
satisfy the requirements of 35 U.S.C. § 102(b).
In response to Appellants’ arguments at pages 9 and 10 of the Appeal
Brief, the Examiner states at page 6 of the Answer that the disclosure of
overlapping particle sizes in Alexander would have rendered the claimed
subject matter prima facie obvious. Indeed, our reviewing court stated in In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
Appeal 2009-007053
Application 10/679,611

8
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even
a slight overlap in range establishes a prima facie
case of obviousness . . . . We have also held that
a prima facie case of obviousness exists when the
claimed range and the prior art range do not
overlap but are close enough such that one skilled
in the art would have expected them to have the
same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).

However, the Examiner’s rejection of claims 32, 33, 38, and 40 is based on
anticipation under 35 U.S.C. § 102(b), not based on obviousness under 35
U.S.C. § 103(a).
Accordingly, we reverse the Examiner’s § 102(b) rejection of claims
32, 33, 38, and 40 and enter a new ground of rejection against claims 32, 33,
38, and 40 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of
Alexander for the reasons stated supra pursuant to 37 C.F.R. § 41.50(b).
.
II. CLAIMS 39 AND 41 UNDER 35 U.S.C. § 103(a)
The Examiner’s obviousness rejection of claims 39 and 41 is premised
upon correctness of the anticipation analysis set forth in the Examiner’s §
102(b) rejection.
Thus, for the same reasons set forth above, we reverse the Examiner’s
§ 103(a) rejection of claims 39 and 41. However, we enter a new ground of
rejection against claims 39 and 41 under 35 U.S.C. § 103(a) based on the
new rationale set forth above, in addition to the findings of fact at page 4 of
the Answer pursuant to 37 C.F.R. § 41.50(b).
.
Appeal 2009-007053
Application 10/679,611

9
III. CLAIMS 17-31 AND 34-37 UNDER 35 U.S.C. § 103(a)
As stated by Supreme Court of the United States in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] 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.

Here, Alexander teaches that ultra-fine particles or dispersoids
corresponding to the claimed filler may be either crystalline or amorphous
metals or ceramics, can be in the form of sphere, elongated particles or plate
like particles depending on their usages and preferably have a size in the
range of 5 to 500 nanometers. Alexander also teaches employing ultra-fine
particles or dispersoids, such as copper or silica, coated or plated with a
corrosion resistant metal, such as gold, in the manufacture of conductive
paints, pastes or inks. Alexander further states (col. 15, l. 64 to col. 16, l. 8)
that:
Metallic inks involving noble metals are, today,
commonly used. These inks require discrete, constant sized and
substantially spherical particles in order to achieve good
performance. Silver composites containing silica can be
prepared in which there is little or no aggregation in the
structure. These materials are useful as metallic inks.

Although Alexander does not specify the claimed aspect ratio of greater than
one, Alexander, by virtue of suggesting the employment of “substantially”
spherical dispersoid or ultra-fine particles, would have suggested employing
ultra-fine or dispersoid particles having an aspect ratio of greater than one
since according to appellants, the term “aspect ratio” refers to the ratio of the
Appeal 2009-007053
Application 10/679,611

10
maximum to the minimum dimension of a particle. In other words, those
particles having imperfect spherical shapes (substantially spherical) have an
aspect ratio of greater than one since imperfect spherical particles, unlike
those perfect spherical particles having the identical maximum and
minimum diameters, necessarily have their maximum diameters at least little
greater than their minimum diameters.
In any event, Nakayama, like Alexander, teaches a conductive paste
used for screen printings employing conductive fillers selected from copper,
nickel, gold, silver or alloy thereof. Nakayama teaches that this filler can be
in the form of fiber, whisker, or flake, which necessarily has an aspect ratio
of greater than one. This disclosure of Nakayama is also consistent with
Alexander, which describes employing ultra-fine particles or dispersoids in
the form of sphere, elongated particles or plate like particles depending on
their usages. Craig further teaches that the fillers taught and/or suggested by
Nakayama and Alexander are known fillers.
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to employ ultra-fine or
dispersoid particles (corresponding to the claimed filler) in the form of either
spherical or elongated particles, such as fibers or whiskers (necessarily
having an aspect ratio of greater than one), having, inter alia, the claimed
nano-particle sizes, in a screen printable formulation, such as a conductive
paste within the meaning of 35 U.S.C. § 103.
Contrary to Appellants’ arguments at pages 11 and 14 of the Appeal
Brief, Alexander’s reference to commonly used inks does not teach one of
ordinary skill in the art away from employing non-spherical shape particles,
i.e., particles having aspect ratios of greater than one, in conductive pastes
Appeal 2009-007053
Application 10/679,611

11
used in screen printable formulations. Nowhere does Alexander discourage
one of ordinary skill in the art from employing non-spherical particles, i.e.,
particles having the claimed aspect ratios, in a screen printable formulation,
such as conductive pastes and/or inks. Alexander does not indicate that non-
spherical ultra-fine or dispersoid particles are not useful for conductive
pastes or inks. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)( “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.”).
Accordingly, for the reasons set forth in the Answer and above, we
affirm the Examiner’s decision rejecting claims 17 through 31 and 34
through 37 under § 103(a) based on the combined teachings of Alexander
and either Nakayama or Craig.
ORDER
In view of the foregoing, we affirm the Examiner decision rejecting
claims 17 through 31 and 34 through 37 under 35 U.S.C. § 103(a), reverse
the Examiner’s decision rejecting claims 32, 33, 38, and 40 under 35 U.S.C.
§ 102(b) and claims 39 and 41 under 35 U.S.C. § 103(a), and enter a new
ground of rejection against claims 32, 33, and 38 through 41 under 35
U.S.C. § 103(a) as unpatentable over Alexander pursuant to 37 C.F.R. §
41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
Appeal 2009-007053
Application 10/679,611

12
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED-IN-PART/§ 41.50(b)

tc
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272