Ex Parte Yadav et al

Patent Trial and Appeal Board

Jun 18, 2013

10898849 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/898,849 07/26/2004 Tapesh Yadav 037768-0172 5024
24959 7590 06/19/2013
PPG INDUSTRIES INC
INTELLECTUAL PROPERTY DEPT
ONE PPG PLACE
PITTSBURGH, PA 15272
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
06/19/2013 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 TAPESH YADAV and KARL PFAFFENBACH
____________

Appeal 2012-003526
Application 10/898,849
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
DONNA M. PRAISS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 2, 7, 8, 11, 13, 15, 18, 20, and 21. We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method for modifying the surface composition of
nanomaterials which comprises processing nanomaterials in the presence of
a gas or vapor phase reactant such as hydrogen, wherein the reactant reacts
with the surface composition of the nanomaterials to transform the surface
composition into a different composition (independent claim 1; see also
independent claim 20).
Appeal 2012-003526
Application 10/898,849

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A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, is set forth below:
1. A method for modifying the surface composition of nanomaterials
comprising:
processing nanomaterials comprising a core and surface of first
composition in the presence of another substance comprising a gas or vapor
phase reactant selected from the group consisting of: hydrogen, ammonia,
carbon monoxide, methanol, methane, carbon containing compounds, boron
containing compounds and nitrogen containing compounds;
wherein during the processing step the gas or vapor phase reactant
reacts with material comprising the surface composition of the nanomaterials
to transform the composition of the surface into a composition different than
the surface of first composition; and
wherein the core of the nanomaterials remain of the first composition.

Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 1, 2, 7, 8, 11, 15, and 18 as unpatentable over Rice (US
4,987,011, patented Jan. 22, 1991) in view of Lupinski (US 5,153,251,
patented Oct. 6, 1992);
claim 13 as unpatentable over Rice, Lupinski, and Orii (US 4,683,128,
patented Jul. 28, 1987); and
claims 20 and 21 as unpatentable over Rice, Lupinski, Bickmore (US
5,984,997, patented Nov. 16, 1999) and Pirzada (US 5,788,738, patented
Aug. 4, 1998).
Appellants do not present separate arguments specifically directed to
the dependent claims including the separately rejected dependent claims.
Therefore, the dependent claims on appeal will stand or fall with the
independent claims of which claim 1 is representative. It follows that our
assessment of this appeal will focus on claim 1.
Appeal 2012-003526
Application 10/898,849

3
We will sustain the above rejections for the reasons expressed in the
Answer.
It is undisputed that Rice discloses a method of treating silicate
particles in the presence of hydrogen gas and a carbon source whereby the
silica (i.e., silicon dioxide) at the particle surface is transformed into silicon
carbide (see Rice col. 1, ll. 6-26, col. 4, ll. 9-34; cf., App. Br. 11 (1st 2
paras.)).
The pivotal issue in this appeal is whether the Examiner erred in
finding that Rice's hydrogen gas "reacts" with the silica during
transformation as required by claim 1 (Ans. 6 citing Rice col. 4, ll. 9-34 and
claim 1).
According to Appellants, "in the Rice method, the hydrogen acts as a
reducing atmosphere for the reaction between the silicon (in the form of
SiO2(s) in the silicates) and the carbon (in the form of coke or graphite, C (s))
to form silicon carbide (SiC (s))" (App. Br. para. bridging 11-12). Appellants
argue that "[h]ydrogen does not participate in the reaction" (id.; emphasis
removed). More specifically, Appellants argue that "the hydrogen cannot be
reactive with respect to the silicon oxide and carbon because, if it were, then
the product would be silicon carbon hydride, not the silicon carbide
explicitly described in Rice" (id. at 17).
In response, the Examiner emphasizes that claim 1 of Rice describes
hydrogen as a gaseous reactant and the essential active ingredient (Ans. 11
quoting with added emphasis the claim 1 recitation "reacting said layered
lattice silicate in particulate form in the presence of a carbon source with a
gaseous reactant comprising hydrogen as the essential active
ingredient"). Further, the Examiner points out that:
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Application 10/898,849

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"the fact that the silicon reacts with the carbon source to form silicon
carbide does not also mean that the silicate particle did not react with the
hydrogen gas" (id.);
"[t]he claims only require that the gas or vapor present during
processing react with the nanoparticles during surface transformation from a
first composition to another composition" (id.); and
"[c]hemicals may participate[] as intermediates in reactions without
also appearing in the overall stoichiometric formula" (id.).
Significantly, Appellants do not rebut these points in their Reply
Brief. Moreover, the Examiner's points are reinforced by paragraph [0061]
of the Specification (which is cited by Appellants in summarizing the claim
1 subject matter (App. Br. 7)). This paragraph discloses that "[o]ne method
for modifying the near-surface composition is to partially reduce the
composition" (Spec. 15 para. [0061]) and that "an oxide nanopowder[] if
treated with hydrogen . . . can lead to a powder composition where [the]
surface of the nanopowder is deficient in oxygen while the bulk retains full
stoichiometry" (id.). In the above quoted method, the hydrogen participates
in the reducing reaction whereby the near-surface composition is made
deficient in oxygen.
Furthermore, as noted previously, Appellants acknowledge that "the
hydrogen [of Rice] acts as a reducing atmosphere" (App. Br. 11). The
record of this appeal reveals no distinction between the reducing function of
hydrogen in the method of Rice and in the method of Specification
paragraph [0061]. To the contrary, it appears that the hydrogen in each of
these methods effects a reducing reaction in the oxide of the surface
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Application 10/898,849

5
composition whereby the surface composition is transformed into a different
composition which does not contain a hydrogen constituent.
In light of the foregoing, we agree with the Examiner that claim 1
does not require the gas or vapor phase reactant (e.g., hydrogen) to react
with the surface composition (e.g., silica) such that the reactant appears in
the stoichiometric formula of the transformed surface composition. It
follows that we find no persuasive merit in Appellants' argument that the
"react" limitation of claim 1 distinguishes over Rice.
Finally, we observe that Appellants' Reply Brief presents an argument
not previously presented in the Appeal Brief (Reply Br. 2; "Furthermore,
one skilled in the art would not combine Bickmore with Rice, Lupinski and
Pirzada as proposed by the Examiner because . . ."). We will not consider
this new argument because Appellants have not presented a showing of good
cause explaining why the argument could not have been presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI
2010) (informative).
For the reasons stated above and in the Answer, we sustain each of the
§ 103 rejections in this appeal.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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