LIQUID X PRINTED METALS, INC.

Patent Trials and Appeals Board

Jun 4, 2020

13777374 - (D) (P.T.A.B. Jun. 4, 2020)

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.
13/777,374 02/26/2013 Richard D. MCCULLOUGH 16-057 9298
30058 7590 06/04/2020
Dentons Cohen & Grigsby P.C.
625 Liberty Avenue
Pittsburgh, PA 15222-3152
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
06/04/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ippatent.dcg@dentons.com
jennifer.magill@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD D. MCCULLOUGH, JOHN BELOT,
REBECCA POTASH, ELIZABETH SEFTON, and CHRISTIANA COX
____________

Appeal 2019-004285
Application 13/777,374
Technology Center 1700
____________

Before DONNA M. PRAISS, N. WHITNEY WILSON and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON AP00PEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Office Action, dated May 14, 2018, rejecting claims 1–8, 13–23, 25, 27–30,
32–41, 54, 55, and 73–76. Appeal Br. 1. An oral hearing was held on April
3, 2020.2 We have jurisdiction under 35 U.S.C. § 6(a). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Liquid X
Printed Metals, Inc. of Pittsburgh, Pennsylvania. Appeal Br. 1.
2 A written transcript of the oral hearing, herein after referred to as “Oral
Hearing Transcripts” or “Tr.,” was made of record on April 21, 2020.

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The invention is directed to metal-containing ink compositions.
Spec. 8. Claims 1 and 76, reproduced from the Claims Appendix to the
Appeal Brief, illustrate the invention (formatting added):
1. A composition, comprising:

at least one metal complex comprising:

at least one metal, wherein the at least one metal is silver,

at least one first ligand which is a sigma donor to the metal and
volatilizes upon heating the metal complex, wherein the first ligand is a
bidentate amine, and

at least one second ligand, which is different from the first ligand and
also volatilizes upon heating the metal complex; and

two or more polar protic solvents,

wherein the metal complex has a solubility at 25°C of at least 100
mg/ml in at least one of the two or more polar protic solvents,

wherein the amount of the at least one first ligand, the at least one
second ligand, and the at least one metal in the composition is
stoichiometric,

wherein the composition is formulated for deposition on a substrate
and conversion of the deposit to a continuous-conductive metal film by
adapting a viscosity of the composition to be less than 500 Cps, and

wherein the composition is substantially free of particles, including
microparticles and nanoparticles.

76. A composition, comprising:

at least one metal complex comprising:

at least one metal, wherein the at least one metal is silver,
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at least one first ligand which is a sigma donor to the metal and
volatilizes upon heating the metal complex, wherein the first ligand is a
bidentate amine, and

at least one second ligand, which is different from the first ligand and
also volatilizes upon heating the metal complex; and

two or more polar protic solvents,

wherein the metal complex has a solubility at 25°C of at least I 00
mg/ml in at least one of the two or more polar protic solvents,

wherein the composition is formulated for deposition on a substrate
and conversion of the deposit to a continuous-conductive metal film by
adapting a viscosity of the composition to be less than 500 Cps, and

wherein the composition is substantially free of particles, including
microparticles and nanoparticles.

Appeal Br. 34, 40 (Claims Appendix).

Independent claims 32 and 55 recite compositions similar to the
composition of claim 1 but include additional features.
Appellant requests review of the following rejections3:
I. Claims 1–8, 13–23, 25, 27–30, 32–41, 54, 55, and 73–75
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.

II. Claim 76 rejected under 35 U.S.C. § 102(b) as anticipated by,
or, alternatively, under 35 U.S.C. § 103(a) as unpatentable over Nojiri (US
4,939,114, issued July 3, 1990).

3 The Examiner withdrew the nonstatutory obviousness-type double
patenting rejection based on co-pending Application No. 12/941,932’s claim
1 because the co-pending Application is now abandoned. Ans. 3; See
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III. Claims 1–5, 7, 8, 13, 15–23, 25, 27–30, 32–35, 37, 39, 40, 54,
55, and 73–75 rejected under 35 U.S.C. § 103(a) as unpatentable over Nojiri
and McCullough (US 2011/0111138 A1, published May 12, 2011).

IV. Claims 6 and 41 rejected under 35 U.S.C. § 103(a) as
unpatentable over Nojiri, McCullough, and Takano (US 4,398,026, issued
August 9, 1983).

V. Claim 36 rejected under 35 U.S.C. § 103(a) as unpatentable
over Nojiri, McCullough, and Jan (US 4,266,011, issued May 5, 1981).

VI. Claims 14 and 38 rejected under 35 U.S.C. § 103(a) as
unpatentable over Nojiri, McCullough, and Cavitt (US 4,102,820, issued
July 25, 1978).

VII. Claims 1–5, 7, 8, 13, 15–23, 25, 27–30, 32–35, 37, 39, 40, 54,
55, and 73–75 rejected under 35 U.S.C. § 103(a) as unpatentable over
Nielsen (US 3,702,259, issued November 7, 1972).

VIII. Claims 6 and 41 rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen and Takano.

IX. Claim 36 rejected under 35 U.S.C. § 103(a) as unpatentable
over Nielsen and Jan.

X. Claims 14 and 38 rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen and Cavitt.

OPINION
Rejection I (35 U.S.C. § 112, first paragraph-written description)
After review of the respective positions of Appellant and the
Examiner, we REVERSE the Examiner’s rejection of claims 1–8, 13–23, 25,
27–30, 32–41, 54, 55, and 73–75 under 35 U.S.C. § 112, first paragraph,

Appeal Br. 32. Accordingly, this rejection is not before us for review on
appeal.
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essentially for the reasons Appellant presents in the Appeal and Reply
Briefs. We add the following for emphasis.
Claim 1 recites “wherein the amount of the at least one first ligand,
the at least one second ligand, and the at least one metal in the composition
is stoichiometric.”
The Examiner finds the Specification, as originally filed, does not
disclose the unique benefits or unexpected results of a stoichiometric
mixture. Final Act. 5; see Ans. 3. In the Answer, the Examiner explains
“[t]here is no teaching in the specification which would inform a person of
skill in the art that a stoichiometric composition has any advantage over a
non-stoichiometric composition” and “the specification does not attribute the
beneficial effects of the invention to a stoichiometric combination of metal,
first ligand and second ligand.” Ans. 15.
The purpose of the written description requirement in
35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63
(Fed. Cir. 1991) (citation omitted)). In addition, the written description
requirement of 35 U.S.C. § 112, first paragraph, applies to all claims
including original claims that are part of the disclosure as filed. Ariad, 598
F.3d at 1349. As stated by the Federal Circuit, “[a]lthough many original
claims will satisfy the written description requirement, certain claims may
not.” Ariad, 598 F.3d at 1349; see also LizardTech, Inc. v. Earth Res.
Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed. Cir. 2005); Regents of the
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University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir.
1997).
The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). “[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad, 598
F.3d at 1351 (citations omitted). This test “requires an objective inquiry into
the four corners of the specification from the perspective of a person of
ordinary skill in the art.” Id. “Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.” Id.
We agree with the Appellant that there is reversible error in the
Examiner’s determination that the claims lack adequate written descriptive
support.
The focus of the Examiner’s rejection for lack of written descriptive
support relates to arguments that Appellant presents for patentability of the
claims over the prior art (see, for example, Appeal Br. 13) (i.e. the
advantages of the stoichiometric relationship between the components). The
Examiner does not point to any specific language in the claim as lacking
adequate written descriptive support (Final Act. 5; see Ans. 3, 15). Thus, the
Examiner has not established that the original disclosure is insufficient to
reasonably convey to those skilled in the art that the inventor had possession
of the claimed subject matter as of the filing date.
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Therefore, we reverse the Examiner’s rejection under
35 U.S.C. § 112, first paragraph.
Rejection II (Claim 76)(35 U.S.C. §§ 102(b), 103(a) over Nojiri)
After review of the respective positions of Appellant and the
Examiner, we AFFIRM the Examiner’s rejections of claim 76 under 35
U.S.C. §§ 102(b), and 103(a), essentially for the reasons the Examiner
presents in the Final Action and the Answer. We add the following for
emphasis.
Claim 76 recites metal-containing ink compositions having metal
complexes comprising first and second ligands as well as metal, “wherein
the metal complex has a solubility at 25°C of at least 100 mg/ml in at least
one of the two or more polar protic solvents.”
The Examiner finds that Nojiri teaches compositions that anticipate
or, alternatively, render obvious the compositions of claim 76. Final Act.
16–17.
Appellant argues that Nojiri does not disclose a composition free of
particles, including microparticles and nanoparticles. Appeal Br. 13.
According to Appellant, Nojiri discloses uniform deposition of metals in the
form of fine particles as most desirable, which Appellant contends
necessarily eliminates the ability of the deposited metal to form a continuous
conductive film. Appeal Br. 14; Nojiri col. 4, ll. 43–52. Appellant directs
attention to experimental evidence in a Declaration under 37 C.F.R. § 1.132
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by Dr. Chengeto Gwengo4 (hereinafter we refer to the Declaration as
“Declaration” or “Decl.” and to Dr. Gwengo as “Declarant”) as showing that
forming metal complexes using the methods and amounts of amine ligand
disclosed in Nojiri necessarily leads to compositions comprising particles
and that deposition of such compositions does not lead to continuous
conductive films. Appeal Br. 14; Decl. ¶¶ 11, 13, 15, 16, and 21. Appellant
further contends that the Examiner’s designation of the limitation
“formulated for deposition of a substrate and conversion of the deposit to a
continuous-conductive metal film” as a statement of intended use that does
not further limit the claimed composition is erroneous because the disputed
limitation denotes an actual state of configuration that fundamentally ties
formation of a continuous-conductive metal film to the physical
characteristics of the composition (a composition that is free of particles).
Appeal Br. 14–15. Appellant additionally asserts that the Declaration
demonstrates that Nojiri’s metal complexes and compositions are not
capable of forming continuous-conductive metal films. Id. at 14. Thus,
Appellant argues that the metal complexes and compositions are necessarily
not the same as those presented in the independent claims of the present
application. Id.
Appellant’s arguments do not identify reversible error in the
Examiner’s finding of anticipation.
In order to anticipate, a reference must identify something falling
within the claimed subject matter with sufficient specificity to constitute a

4 Appellant/Applicant submitted the Declaration on December 21, 2017 and
the Examiner entered it into the record in the Non-Final Office Action dated
February 13, 2018.
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description thereof within the purview of § 102. In re Schaumann, 572 F.2d
312, 317 (CCPA 1978). It is also well settled that when a claimed product
reasonably appears to be substantially the same as a product disclosed by the
prior art, the burden is on the applicant to prove that the prior art product
does not inherently possess characteristics attributed to the claimed product,
and that it is of no moment whether the rejection is based on § 102 or § 103
since the burden on the applicant is the same. In re Spada, 911 F.2d 705,
708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
The premise of the Examiner’s rejection is that Nojiri teaches a
composition free of particles that includes a complex compound comprising
silver carboxylate and a bidentate amine (ethylenediamine), where the
carboxylate can be an acetate or an oxalate in a polar protic solvent of water
and alcohol. Final Act. 16; Nojiri col. 4, ll. 9–32. The Examiner finds
Nojiri’s silver complex compound (ethylenediamine silver acetate) is the
same as the silver complex compound of claim 76 and, thus, would possess
the claimed solubility property. Final Act. 16. The Examiner concludes
Nojiri’s composition anticipates the subject matter of claim 76. Id. at 17.
Given the Examiner’s findings, there is reason to believe Nojiri’s
composition would possess the claimed solubility property. See Best, 562
F.2d at 1255. Accordingly, the burden is shifted to Appellant to demonstrate
that the claimed composition differs from the composition of the prior art.
Id.
Appellant does not explain adequately why Nojiri’s deposition
process would necessarily lead one skilled in the art to understand Nojiri’s
impregnating solution is not free of particles. While Appellant contends that
Nojiri’s “[d]eposition of the metal as fine particles necessarily eliminates the
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ability of the deposited metal to form a continuous conductive film” (Appeal
Br. 14), Nojiri in fact discloses that the solution is treated after the
impregnation is carried out by selecting the temperature and time required to
deposit silver particles on the carrier. Nojiri col. 4, ll. 41–45. That is,
Nojiri’s disclosure suggests that deposition of the metal in a specific form
depends on the treatment of the solution after impregnation. Like Nojiri, the
Specification also discloses that the inventive compositions are subjected to
heating or irradiating to form the desired product (conductive films). Spec.
18. Thus, the claim language “formulated for deposition of a substrate and
conversion of the deposit to a continuous-conductive metal film” appears to
describe a result of a heat treatment of the composition and not necessarily
an inherent property of the composition.
Appellant directs us to the Declaration in support of the assertion that
Nojiri’s impregnating solution is not free of particles. Appeal Br. 14–15. In
the Declaration, Declarant states that comparative data demonstrate that
compositions produced using methods which include only a small excess of
the first ligand, as taught by Nojiri (such as 5 to 30% excess of the amine;
Nojiri at col. 3, ll. 39-41), contain particles such as microparticles and
nanoparticles while the claimed compositions made using a large excess
(stoichiometric amounts) of the first ligand followed by removal of the
residual amines, as disclosed on pages 16 and 26 (Example 2) of the
Specification, do not. Decl. ¶¶ 11, 13, 15, 16, 21; see Appeal Br. 13.5

5 We note that claim 76 is a composition claim that does not include any
process steps. That is, claim 76 is not drafted in a product-by-process
format. We additionally note that claim 76 does not recite the amounts of
the ligands and metal as being stoichiometric nor the addition of excess
amine ligand to make the claimed metal complexes.
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Declarant further states that the Declaration presents experimental evidence
demonstrating that forming metal complexes using only a small excess of
the amine “likely failed to promote complete conversion of all reactants to
products, which is observed by limited solubility.” Decl. ¶ 16; see Appeal
Br. 13.
We have considered Appellant’s arguments and Declarant’s statement
and find them unpersuasive for the reasons the Examiner presents. Ans. 16.
Appellant asserts the Declaration shows a comparison of Nojiri’s
compositions against the claimed invention. However, the portions of the
Declaration relied upon for this purported showing do not compare Nojiri’s
compositions as alleged but, instead, compare compositions from a
secondary reference to Cavitt against the claimed invention. See Decl.
¶¶ 11, 12a. From this comparison, Declarant expressly concludes “[t]hese
results show clear differences between the prior art compositions (Cavitt)
and the presently claimed compositions.” Id. ¶ 22. We note Declarant’s
conclusion is limited to a comparison between Cavitt’s compositions and the
claimed compositions.
The Appeal Brief, Reply Brief, and Declaration provide no
explanation why Nojiri’s compositions were not directly compared against
the claimed compositions. The Appeal Brief, Reply Brief, and Declaration
also fail to explain how or why Cavitt’s compositions are representative of
Nojiri’s compositions. Further, the Declaration only compares inventive
compounds made via processes using preferred amounts of excess amines.6

6 The Specification recites the stoichiometric ratio between the amine
compound and the silver carboxylate of at least 13:1, or at least 15:1, or at
least 20:1 as preferred embodiments. Spec. 16. Thus, the declaration does
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At oral hearing, Appellant argued that the compositions of Cavitt and Nojiri
are equivalent to the extent that both form metal complexes using a small
excess of the amine (30 weight percent). See generally Tr. 9–10. This
argument does not explain adequately how Cavitt’s compositions, as a
whole, relate to Nojiri’s compositions to the extent of being representative of
Nojiri’s compositions. Therefore, Appellant does not provide an adequate
explanation why the fact that both references use 30% of an amine ligand to
make the metal complexes is sufficient for one skilled in the art to
understand that Cavitt’s compositions are representative of Nojiri’s
compositions. Thus, we agree with the Examiner that the showing is
insufficient because the comparative results presented in the Declaration do
not fairly represent Nojiri’s compositions. Ans. 16. Appellant has not
shown adequately that Nojiri’s compositions do not possess the properties
(solubility and no particles) of the claimed compositions.
Accordingly, we affirm the Examiner’s rejection of claim 76 under
35 U.S.C. § 102(b) as anticipated by Nojiri.
We also uphold the alternative obviousness rejection for the reasons
the Examiner presents and those we provide because anticipation is the
epitome of obviousness. See, e.g., In re Fracalossi, 681 F.2d 792, 794
(CCPA 1982).
In upholding the alternative obviousness rejection, we have
considered the Declaration to the extent that it purports to show unexpected
results or benefits from using stoichiometric amounts of the ligands and the

not provide information beyond the preferred amounts disclosed and,
therefore, does not support the full scope of the claim.

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metal in forming the metal complex. Decl. ¶¶ 6, 9, 13, 15, 16. We do not
find this evidence persuasive because it is not clear that the showing
distinguishes the claimed invention from the closest prior art (Nojiri) for
reasons we give above. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Further, the showing is based on a limited number of examples and
Appellant has not explained adequately why these examples are reasonably
commensurate with the broad scope of compositions claimed so as to
provide an adequate basis to support a conclusion that other embodiments
falling within the claim will behave in the same manner. In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035
(CCPA 1980).
Rejection III (Claims 1, 32, and 55) (35 U.S.C. § 103(a) over Nojiri and
McCullough)

After review of the respective positions of Appellant and the
Examiner, we AFFIRM the Examiner’s rejections of claims 1–5, 7, 8, 13,
15–23, 25, 27–30, 32–35, 37, 39, 40, 54, 55, and 73–75 under 35 U.S.C. §
103(a), essentially for the reasons the Examiner presents in the Final Action
and the Answer. We add the following for emphasis.
Appellant identifies independent claims 1, 32, and 55 as
representative of the claimed subject matter for this ground of rejection.
Appeal Br. 15. Accordingly, we limit our discussion to independent claim 1.
Claims 2–5, 7, 8, 13, 15–23, 25, 27–30, 32–35, 37, 39, 40, 54, 55, and 73–75
stand or fall with claim 1.
Claim 1 recites metal-containing ink compositions having metal
complexes comprising first and second ligands as well as at least one metal,
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“wherein the amount of the at least one first ligand, the at least one second
ligand, and the at least one metal in the composition is stoichiometric.”
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 6–8.
Appellant argues that Nojiri teaches the use of a small excess (an
amount of 5 to 30%) of the amine (first ligand) and, thus, teaches away from
using a large excess of the amines as taught in the present application to
produce the metal complex. Appeal Br. 16–17; Nojiri col. 4, ll. 39–41; see
Spec. 16. Appellant further argues that the Declaration presents comparative
data demonstrating that compositions produced using methods which
include only a small excess of the first ligand, as taught by Nojiri, also
contain particles such as microparticles and nanoparticles. Appeal. Br. 17
(citing Dec. ¶¶ 11, 13, 15, 16, and 21), 19–20. Thus, Appellant asserts that
Nojiri’s compositions necessarily comprise non-stoichiometric amounts of
the first and second ligands and the metal because Nojiri does not teach a
13-fold excess of the amine as disclosed in the Specification nor the removal
of the excess of unreacted amine in a purification step after formation of a
complex. Appeal Br. 17–20; Spec. 16.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
Appellant’s arguments and evidence are not persuasive of a teaching
away from the invention. “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.” In re
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Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Further, references in a
combination may be said to teach away where their combined teachings
would produce a “seemingly inoperative device”. See In re Sponnoble, 405
F.2d 578, 587 (CCPA 1969). Teaching an alternative or equivalent method,
however, does not teach away from the use of a claimed method. See In re
Dunn, 349 F.2d 433, 438 (CCPA 1965).
In this case, as Appellant notes, Nojiri discloses adding excess amine
ligand “[u]sually” in “an amount 5 to 30% in excess of the equivalent
amount.” Appeal Br. 16–17; Nojiri col. 4, ll. 39–41. Thus, this portion of
Nojiri discloses adding excess amine ligand and that a typical amount of
excess amine ligand is added to facilitate the formation of metal complexes.
At best, this disclosure relates to a preferred embodiment. Appellant has not
explained adequately why Nojiri’s disclosure would lead a person of
ordinary skill in a direction divergent from the path that was taken by the
applicant when it clearly teaches the use of excess amount of amine ligand.
Appellant directs us to no portion of Nojiri or provides any other technical
explanation of why one skilled in the art would understand Nojiri’s
disclosure as being limited to adding only 5 to 30% excess amine ligand in
forming the metal complexes. Thus, Appellant fails to direct our attention to
any teaching in the prior art that supports the teaching away argument.
Generally, the disclosed examples and preferred embodiments do not
constitute a teaching away from a broader disclosure or non-preferred
embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
With respect to Appellant’s argument concerning the removal of
unreacted amine in a purification step after formation of a complex in Nojiri,
this argument is unpersuasive because it does not address the rejection the
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Examiner presents. It is well established that the obviousness inquiry does
not ask “whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see
also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”). “[T]he test
[for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at
425–26.
The Examiner’s rejection is based on the combined teachings of Nojiri
and McCullough.7 Final Act. 7–8. The Examiner relies on McCullough’s
teachings to establish that it is known to remove excess unreacted amine

7 If prosecution is further continued, the Examiner may wish to consider
whether McCullough’s teachings, as a whole, are relevant to the claimed
invention. McCullough is Appellant’s own prior art given that three of the
named inventors for this Application (Richard D. McCullough, John Belot,
and Rebecca Potash) are also named as inventors in the McCullough
reference. In addition to the teachings highlighted by the Examiner,
McCullough discloses metal complexes adapted to form conductive metal
films and lines upon deposition and treatment. McCullough Abstr.
McCullough discloses a composition comprising at least one metal complex
comprising at least one metal (silver) and at least two ligands, wherein at
least one first ligand is a bidentate amine and at least one second ligand
different from the first (carboxylate), wherein the metal complex is soluble
in a solvent at 25° C. Id. ¶¶ 4, 6, 12, 19. McCullough also describes the
composition as substantially or totally free of nanoparticles. Id. ¶¶ 23–24.
In addition, McCullough discloses making the composition using a large
excess amount of amine and removing the unreacted amount of amine. Id.
¶¶ 264, 267. Therefore, McCullough’s teachings may be significant in
evaluating the patentability of the claimed invention.
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after formation of a silver complex compound by evaporation under vacuum.
Ans. 19; McCullough ¶ 267. Moreover, like McCullough, Nojiri teaches the
use of excess amines in forming metal complexes. Nojiri col. 4, ll. 39–41.
One skilled in the art would have reasonably expected that some of Nojiri’s
excess amines would remain unreacted after forming the desired complexes.
Thus, Appellant does not explain adequately why one skilled in the art,
using no more than ordinary creativity, would not have been able to modify
Nojiri’s teachings to incorporate McCullough’s technique for removing
unreacted amines as taught by McCullough. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary
skill in the art).
Appellant’s argument that using only a small excess of amine would
yield a non-stoichiometric complex or a composition that does not comprise
stoichiometric amounts of the first and second ligands and the metal (Appeal
Br. 18–19) is unpersuasive for the reasons we give above in our previous
discussion of the Declaration evidence related to the anticipation/
obviousness rejections of claim 76.
We have also considered Appellant’s arguments and evidence alleging
that Nojiri’s compositions are not free of particles in the context of this
rejection. We again find the evidence insufficient to overcome a prima facie
case of obviousness for the reasons we give in our previous discussion of the
Declaration related to the anticipation/ obviousness rejections of claim 76.
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Appellant argues that Nojiri does not teach forming a metal complex
in solution prior to deposition on a substrate is an important feature of the
composition. Appeal Br. 18. According to Appellant, Nojiri discloses the
amine ligand can be added at any stage in formation of the silver catalyst
(i.e., metal complex) and, thus, Nojiri provides no motivation to one of
ordinary skill in the art to purify the excess amine from the metal complex
prior to deposition on a substrate. Id.
Appellant’s arguments lack persuasive merit. It is well settled that a
reference may be relied upon for all that it discloses and not merely the
preferred embodiments as suggested by Appellant. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“‘[A]ll disclosures
of the prior art, including unpreferred embodiments, must be considered.’”
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re
Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art
reference’s disclosure is not limited to its examples).
Appellant does not direct us to any portion of Nojiri that teaches
addition of an amine ligand at any stage in the formation of the silver
catalyst, nor do we find any. Moreover, assuming arguendo that Nojiri
discloses such an addition, this would only mean that Nojiri contemplates a
number of different embodiments, including Appellant’s technique for
adding the amine ligand. Appellant does not explain adequately why such a
broader teaching would lead one skilled in the art away from any
specifically disclosed technique for the addition of an amine ligand.
Appellant argues that Nojiri and McCullough teach away from the use
of polar protic solvents. Appeal Br. 21; Nojiri col. 5, ll. 1–6; McCullough ¶¶
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185–190. Appellant further argues that McCullough’s teachings provides no
expectation that a purified metal complex may be successfully dissolved in a
solvent other than a hydrocarbon solvent. Appeal Br. 21.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination of obviousness.
The cited portions of Nojiri (col. 5, ll. 1–6 (disclosing that the use of
alcohol as a solvent as not desirable from a safety standpoint)) and of
McCullough (¶ 186 (disclosing that an “oxygenated solvent can be
substantially or totally excluded”)) differentiate between preferred
embodiments and less preferred embodiments for the practice of their
respective inventions. As such, these disclosures do not exclude the use of
polar protic solvents but, instead, indicate that their use is not as desirable.
See Merck, 874 F.2d at 807; Fracalossi, 681 F.2d at794 n.1. As we note
above, the disclosed examples and preferred embodiments do not constitute
a teaching away from a broader disclosure or non-preferred embodiments.
Susi, 440 F.2d at 446 n.3.
With respect to the argument specific to McCullough, Appellant does
not direct us to any portion of the reference that limits the removal of
unreacted amine to instances where the metal complex is used in a non-polar
solvent. Appellant also fails to provide an adequate technical reasoning or
other objective evidence in support of the stated argument. Appellant’s
attorney arguments cannot take the place of evidence. See In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA
1979).
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Accordingly, we affirm the Examiner’s rejection of claims 1–5, 7, 8,
13, 15–23, 25, 27–30, 32–35, 37, 39, 40, 54, 55, and 73–75 under 35 U.S.C.
§ 103(a) as unpatentable over Nojiri and McCullough.
Rejection IV (Claims 6 and 41)(35 U.S.C. § 103(a) over Nojiri, McCullough,
and Takano)

Claims 6 and 41 recite the use of isopropyl alcohol as one of the polar
protic solvents in the claimed composition.
Both the Examiner and Appellant agree that Nojiri teaches the use of
polar protic solvents such as alcohols, but does not teach specifically the use
of isopropyl alcohol. Final Act. 8; Appeal Br. 27. Specifically, Nojiri
discloses the use of an aqueous alcohol solution, which suggests a polar
protic solvent. Nojiri col. 4, ll. 29–30. The Examiner relies upon Takano
for its teaching that isopropyl alcohol is a protic solvent. Final Act. 9;
Takano col. 1, ll. 60–62.
We have considered Appellant’s arguments with respect to Takano
(Appeal Br. 27) and are unpersuaded of reversible error in the Examiner’s
determination of obviousness.
While Takano may involve a different process, Takano does teach
isopropyl alcohol as a known protic solvent. Given that Nojiri teaches the
use of alcohols in its compositions, Appellant does not explain adequately
why one skilled in the art, using no more than ordinary creativity, would not
have been capable of using a known protic solvent, such as isopropyl
alcohol, as a solvent for Nojiri’s compositions. See KSR, 550 U.S. at 421;
Sovish, 769 F.2d at 743.
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Accordingly, we affirm the Examiner’s prior art rejection of claims 6
and 41.
Rejection V (Claim 36) (35 U.S.C. § 103(a) over Nojiri, McCullough, and
Jan)

Dependent claim 36 recites the R2 substituent in the metal complex
formula (I) of claim 32 is substituted with at least one heteroatom.
The Examiner relies on Jan as teaching a silver complex compound in
which the complexing agent is urea. Final Act. 9; Jan col. 9, l. 35. The
Examiner finds that urea is known to contain two amine groups and a hetero
atom (oxygen). Final Act. 9.
We have considered Appellant’s arguments regarding this rejection
(Appeal Br. 28), but find them unpersuasive for the reasons the Examiner
presents (Final Act. 9–10). Moreover, Appellant’s arguments do not refute
the Examiner’s finding that urea is a known complexing agent for the
formation of metal complexes.
Accordingly, we affirm the Examiner’s prior art rejection of claim 36.
Rejection VI (Claims 14 and 38) (35 U.S.C. § 103(a) over Nojiri,
McCullough, and Cavitt)

Claim 14 recites “wherein the first ligand comprises at least one
amine group which is substituted with a polar group or a linear alkane.”
Claim 38 recites similar subject matter.
The Examiner relies on Cavitt as teaching the recited claim features.
Final Act. 10.
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Appellant argues that Cavitt suggests the metal complex may require
the excess amine to be solubilized, or remain soluble. Appeal Br. 29. Thus,
Appellant contends one of ordinary skill in the art would not have had a
reasonable expectation of success that the complex would be soluble when
purified away from the excess amine, and re-dissolved. Id. (citing to Cavitt
col. 2, ll. 15–24, 30–35, col. 4, ll. 11–28, 38–47).
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness.
We have reviewed the cited portions of Cavitt and find no suggestion
therein that the metal complex may require the excess amine to be
solubilized, or remain soluble. Moreover, Appellant’s arguments do not
persuasively contest that Cavitt teaches a ligand comprising at least one
amine group which is substituted with a polar group or a linear alkane.
Accordingly, we affirm the Examiner’s prior art rejection of claims 14
and 38.
Rejections VII–X (All under 35 U.S.C. § 103 (a) based on Nielsen)
The Examiner presents a number of rejections under
35 U.S.C. § 103(a) relying on Nielsen as the primary reference. See Final
Act. 11–17. Nielsen’s teachings are substantially similar to Nojiri’s
teachings, as applied by the Examiner. Compare Nielsen based rejections
(Final Act. 11–16) with Nojiri based rejections (Final Act. 6–11, 16–17). In
addressing the rejections based on Nielsen, Appellant relies on a line of
argument substantially similar to the one presented for the rejections based
on Nojiri. For example, Appellant relies on the Declaration to show that
Nielsen’s compositions are not free of particles for the same reasons argued
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for Nojiri’s compositions. Compare arguments pertaining to Nielsen
(Appeal Br. 23–24) with arguments pertaining to Nojiri (Appeal Br. 17–18).
We have considered Appellant’s arguments for each of the rejections
based on Nielsen as a primary reference. We find these arguments do not
identify error in the Examiner’s determination of obviousness for essentially
the same reasons we give above for the rejections based on Nojiri as a
primary reference.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1–8, 13–23, 25, 27–30, 32–41, 54, 55, and 73–75 over Nielsen.

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CONCLUSION
Because the affirmed rejections reach all the claims presented for
review on appeal, our decision is an affirmance.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 13–23,
25, 27–30,
32–41, 54,
55, 73–75
112, first
paragraph
Written Description 1–8, 13–23,
25, 27–30,
32–41, 54,
55, 73–75
76 102(b)/103(a) Nojiri, 76
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75
103(a) Nojiri, McCullough 1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75

6, 41 103(a) Nojiri, McCullough,
Takano
6, 41
36 103(a) Nojiri, McCullough,
Jan
36
14, 38 103(a) Nojiri, McCullough,
Cavitt
14, 38
1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75
103(a) Nielsen 1–5, 7, 8,
13, 15–23,
25, 27–30,
32–35, 37,
39, 40, 54,
55, 73–75

6, 41 103(a) Nielsen, Takano 6, 41
36 103(a) Nielsen, Jan 36
14, 38 103(a) Nielsen, Cavitt 14, 38
Overall
Outcome
1–8, 13–23,
25, 27–30,
32–41, 54,
55, 73–76

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED