Monnir Boureghda et al.

Patent Trials and Appeals Board

Jul 19, 2019

14027530 - (D) (P.T.A.B. Jul. 19, 2019)

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.
14/027,530 09/16/2013 Monnir Boureghda 31183-A2004-7017B 8471
159237 7590 07/19/2019
MacDermid Performance Solutions - Patents
c/o Carmody Torrance Sandak & Hennessey LLP
195 Church Street
P.O. Box 1950
New Haven, CT 06509-1950
EXAMINER
TSO, STANLEY
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
07/19/2019 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):
mpspatents@carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MONNIR BOUREGHDA, NITIN DESAI, ANNA
LIFTON, OSCAR KHASELEV, MICHAEL T. MARCZI,
and BAWA SINGH1
________________

Appeal 2017-009009
Application 14/027,530
Technology Center 2800
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

CASS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 10–12, 14–19, 25, and 26, which constitute all the claims
pending in this application. Appeal Br. 3.2 We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part and enter new grounds of rejection.

1 Appellants list Alpha Metals, Inc. as the real party in interest. Appeal Brief
filed February 28, 2017 (“Appeal Br.”) 2.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
November 22, 2016 (“Final Act.”); the Examiner’s Answer mailed April 17,
2017 (“Ans.”); and the Reply Brief filed June 7, 2017 (“Reply Br.”).
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THE PRESENT APPLICATION
The present invention relates to methods for attaching dies to a
substrate at high temperatures. Spec. ¶¶ 2–3. Appellants’ Specification
explains that conventional solder will quickly fail at temperatures of 200º
Celsius or more. Id. ¶ 4. The invention overcomes this problem by
including silver, which melts at 900 ºC. Id. ¶ 4. More specifically,
Appellants’ process uses a precursor paste that includes silver nano-powder
and a capping agent to produce a high density sintered silver joint. Id. The
Specification explains that “the capping agent is present at about 0.2 weight
percent to about 15 weight percent based on the weight of the capped silver
particles and more particularly is present from about 1.5–2.5 weight
percent.” Id. ¶ 6. Use of the disclosed nano-powder paste is said to prevent
silicon die cracking during pressure sintering. Id. at 4.
Appellants’ Specification further states that the “specially formulated
nano-materials such as [the claimed] nano-silver paste,” are disclosed in a
commonly assigned application that subsequently issued to Parashar et al.
(U.S. Patent 7,968,008 B2) (the “’008 patent”), which Appellants
incorporate by reference into the present Specification. Spec. ¶ 23. The
’008 patent, in turn, discloses the use of metal particles to produce inks, and
it discloses that “typically a suitable amount of particles (either capped or
uncapped) are used to provide a dispersion including about 10–90 weight
percent particles, more particularly about 20–80 weight percent particles.”
’808 patent, col. 9, ll. 59–67.
Claims 10 and 16 illustrate the claims at issue:
10. A device, comprising:
a substrate;
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a die disposed on the substrate; and
an electrical joint between the die and the
substrate, the electrical joint comprising a nano-
silver paste, the nano-silver paste comprising 20 to
80 percent by weight nano-silver particles, the
nano-silver particles comprising a capping agent,
wherein the nano-silver paste is sintered at a
temperature of 300°C or less to provide electrical
coupling between the substrate and the die.

16. A kit for producing an electrical joint, the kit
comprising:
a nano-silver paste including silver particles
comprising a capping agent, the nano-silver paste
comprising 20 to 80 percent by weight nano-silver
particles and about 10 to about 15 percent by
weight capping agent; and
instructions for using the nano-silver paste to
provide an electrical joint between a substrate and
a die disposed on the substrate.
Appeal Br. 12–13 (Claims Appendix).

THE EXAMINER’S REJECTIONS
Claims 10, 14, 15 and 25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Osako (US 2006/0038304 A1; published Feb. 23,
2006) in view of Green (Mark Green, “Organometallic based strategies for
metal nanocrystal synthesis,” Mar. 24, 2005, The Royal Society of
Chemistry 2005, pp. 3002–10 (“Green”).
Claim 11 stands rejected as unpatentable over Osako, Green, and
Collins (US 2009/0020856 A1; published Jan. 22, 2009).
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Claims 16–18 stand rejected as unpatentable over Osako, Green, and
Li (WO 2006/113719 A2; published Oct. 26, 2006).
Claims 12 and 19 stand rejected as unpatentable over Osako, Green,
Collins, and Li.
Claim 10 stands rejected as unpatentable over Yamakawa
(US 2009/00236404 A1; published Sept. 24, 2009) in view of Green.
Claim 16 stands rejected as unpatentable over Yamakawa, Green, and
Li.

CLAIMS 10–12, 14, 15, AND 25 ARE INDEFINITE
UNDER 35 U.S.C. § 112, ¶ 2 (PRE-AIA)
“Before considering the rejections . . ., we must first [determine the
scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262
(CCPA 1974). We, therefore, first analyze the meaning and scope of
independent claim 10. This analysis indicates that some of claim 10’s
language appears to be directed to a final product, while other claim
language appears to be directed to an intermediate product.
Specifically, claim 10 is drawn to a generic “device,” and the claim
states that the device comprises “an electrical joint comprising a nano-silver
paste[, in turn,] comprising 20 to 80 percent by weight nano-silver particles”
(claim 10, emphasis added). As explained above, Appellants’ Specification
uses the term “nano-silver paste” to refer to an intermediate composition that
is disposed initially onto the substrate and subsequently sintered. See, e.g.,
Spec. ¶¶ 23–35, 38–42. On the other hand, Appellants’ Specification uses
the term “electrical joint” to mean the final solid silver that results from the
sintering process. See, e.g., Spec. ¶ 36 (explaining that a capping agent
optionally may be used with the intermediate paste or “material” “so that
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processing [including sintering] of the material does not result in a poorly
resulting final product or electrical joint between the electronic component
and the substrate”) (emphasis added); id. at 43 (“[a]fter disposition of the
electronic component 120 [on the nanomaterial 110], the overall assembly
may be sintered such that the nanomaterial 110 is cured to provide an
electrical joint between the electronic component 120 and the substrate 110
[sic: 100] (see FIG. 1D)”).
Read literally, this claim language sets forth that claim 10 is directed
to a final product (an electrical joint) that comprises an intermediate product
(the claimed nano-silver paste). This ambiguity makes it unclear what the
claim is directed towards because the existence of the paste and the joint are
mutually exclusive. The final, post-sintered joint necessarily does not
comprise the intermediate, pre-sintered paste. And the pre-sintered paste
necessarily precludes the existence of a sintered joint. Thus, it is not
reasonably clear whether device claim 10 is intended to be directed (1) to the
nano-silver paste and further include a recitation of the functionality or
intended use of the intermediate paste, or (2) the sintered electrical joint and
further include a recitation of the process by which the product is made.
This distinction is significant because, for example, the finished joint
would not have the same weight percentage of nano-silver particles as the
paste would have before sintering. Appellants’ Specification explains that
the “high temperatures of the sintering process results in evaporation of the
solvent,” so that the weight percent of nanoparticles in the finished joint
would be different from the composition of nanoparticles in the nano-silver
paste at the start of the sintering process. See Spec. ¶ 32. It, therefore, is
unclear whether claim 10 reads on a paste that contains a weight percentage
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of “20 to 80 percent” of nano-silver particles or whether claim 10 reads on a
solid silver joint that was produced from sintering such a paste.
It also is ambiguous whether the recited capping agent, in fact, needs
to be present in the composition of claim 10. The Specification explains that
the invention may involve “removing the capping agent from the capped
silver particles before the sintering step.” Spec. ¶ 8; see Spec. ¶ 34
(explaining that “[i]n some examples, the capping agent may be removed to
provide a substantially pure metal” to deposit on the substrate). In such an
example, if claim 10 were interpreted as being directed to the final product, a
silver joint arguably may infringe claim 10 even if no capping agent is
present in the final-product silver.
We additionally note that claim 10 further recites that the nano-silver
paste comprises nano-silver particles, and “the nano-silver particles[, in
turn,] compris[e] a capping agent.” This recitation is inconsistent with
Appellants’ Specification, which discloses that the paste comprises nano-
silver particles and a capping agent. See, e.g., Spec. ¶ 26 (“the metal
particles may be mixed with a capping agent”). As such, it is not reasonably
clear whether claim 10’s recitation that “the nano-silver paste comprise[s] 20
to 80 percent by weight nano-silver particles” means that the weight of the
capping agent is included within the recited range of weight ratios.
For the reasons set forth above, we determine that claim 10 does not
set forth the metes and bounds of claim protection being sought with
reasonable clarity. Accordingly, we exercise our discretionary authority
under 37 C.F.R. § 41.50(b) and issue a new rejection for claim 10 as being
indefinite under pre-AIA 35 U.S.C. § 112, ¶ 2). We, likewise, newly reject
claims 11, 12, 14, 15, and 25, which depend from claim 10 and do not cure
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the ambiguities noted above. See Ex parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential) (“if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite;” see also Ex parte McAward, Appeal No. 2015-
006416, 2017 WL 3669566 (PTAB Aug. 25, 2017) (precedential).

THE OBVIOUSNESS REJECTIONS OF CLAIMS 10–12, 14, 15, AND 25
Because claims 10–12, 14, 15, and 25 are so indefinite that
“considerable speculation as to [the] meaning of the terms employed and
assumptions as to the scope of such claims” is needed, we do not address the
merits of the Examiner’s rejections of these claims under 35 U.S.C. § 103.
We, instead, summarily reverse these rejections. See In re Steele, 305 F.2d
859, 862 (CCPA 1962) (holding that the Examiner and the Board were
wrong in relying on what, at best, were speculative assumptions as to the
meaning of the claims and in basing a prior-art rejection thereon).

THE REJECTIONS OF CLAIMS 16–19 and 26 BASED ON
COMBINATIONS INCLUDING OSAKO
Unlike independent claim 10, it is reasonably clear that independent
claim 16 is directed to the intermediate product—the nano-silver paste.3 In

3 In addition to reciting a nano-silver paste, “kit” claim 16 additionally
recites “instructions for using the nano-silver paste.” These additional
instructions reasonably constitute non-functional descriptive material. As
noted by the Examiner (Final Act. 9), the claimed instructions do not
patentably distinguish over the claimed nano-silver paste. See In re Ngai,
367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583–84
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rejecting independent claim 16, the Examiner acknowledges that the claimed
range of 20 to 80 weight percent nano-silver particles is not disclosed in the
combination of Osako, Green and Li. Final Act. 8. The Examiner
nonetheless determines that this limitation would have been obvious, stating
that:
Osako, [0192] and Table 2 discloses various ratios of silver
nanoparticles. It would have been obvious before the effective
filing date of the claimed invention to a person having ordinary
skill in the art to which the claimed invention pertains to have
constructed Osako's adhesive, as modified by Green, with the
nano-silver paste comprising 20 to 80 percent by weight nano-
silver particles, [because] it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering
the optimum or working ranges involves only routine skill in the
art. In re Aller, 105 USPQ 233.
Id.
The Examiner further determines that “Osako proposes several values
and ranges of values of the silver nanoparticles in the conductive paste (see
for example Tables 1–8)” and thus “a person of ordinary skill would have
discovered the range of the nano-silver particles through routine
experimentation. Ans. 5, 9.
In response, Appellants argue that “Osako discloses the use of both
micro and nano sized silver particles in its conductive adhesive agent
composition” and that the “[t]he purpose of the nano particles is to fill the
gaps left in the composition by the micro particles and by the removal of the
resin.” Reply Br. 3 (citing Osako ¶ 6). Appellants assert that “Osako is
clear from the outset that the nano particles must be used in ‘a small amount’

(Fed. Cir. 1994); Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005),
aff’d, slip op. 06-1003 (Fed. Cir. 2006).
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and in a ‘fixed ratio’ with the normal silver powder.” Id. (citing Osako
¶ 11).
Appellants also quote paragraph 138 of Osako, stating that the “upper
limit of the blended amount of ultrafine particles is in the range of not
exceeding 10 parts per weight based on 100 parts of metal powder.” Id.
(quoting Osako ¶ 138). Appellants argue that “[t]hus, Osako expressly
teaches away from using more than 10 parts by weight ultrafine particles
based on 100 parts of metal powder” and “it would simply not [have been]
obvious to a person of ordinary skill in the art to ignore Osako’s clear
instructions, risk having ‘insufficient binding capability,’ and more than
double the amount of Osako’s ultrafine particles.” Id.
We agree with Appellants. The Examiner has not established that
adjusting the “nano-silver paste [to comprise] 20 to 80 percent by weight
nano-silver particles” would have been arrived at through routine
experimentation—at least not based upon Osako’s teachings. The Examiner
relies on Tables 1–8, but none of those tables discloses an amount of silver
nanoparticles greater than 10% by weight. Osako, Tables 1–8.
Moreover, we agree with Appellants (Reply Br. 3) that Osako teaches
not to use more than 10 percent by weight of nano particles. In this regard,
Osako teaches that the “upper limit of the blended amount of ultrafine
particles is in the range of not exceeding 10 parts per weight based on 100
parts of metal powder,” and that it is important to stay within this limit
because “[i]f the blending ratio of the ultrafine particles to the metal powder
is unnecessarily high, the ratio of the binder resin relatively decreases,
resulting in an insufficient binding capability of the binder resin maintaining
the mechanical strength of the entire cured product layer formed.” Osako
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¶ 138. As Appellants point out, a person of ordinary skill would have had to
double this 10% upper limit of Osako in order to reach the lower limit of the
range in claims 10 and 16.
The Examiner provides insufficient reason or motivation why one of
ordinary skill would have modified Osako in this manner. We also do not
find the Examiner’s reliance on In re Aller, 220 F.2d 454 (CCPA 1955) to be
persuasive because in Aller, unlike in the present case, the prior art at issue
did not specifically include an upper limit, much less one that was half of the
lower limit of the claimed range. See Aller at 458.
Consequently, the Examiner’s rejection of claim 16 that is based on
Osako as the primary reference is in error, so we reverse that rejection. We
also reverse the rejection of claims 17, 18, and 26, which depend from
claim 16.
With respect to the remaining rejection of dependent claim 19, the
Examiner does not rely on Collins to cure the deficiency of the obviousness
rejection explained above. Final Act. 11. Accordingly, we also reverse the
rejection of that claim for the reasons discussed above in relation to
claims 16–18.

THE REJECTIONS BASED ON COMBINATIONS
INCLUDING YAMAKAWA
A. Prior-Art Status of Yamakawa
Appellants argue that the Examiner’s rejection based on Yamakawa is
in error because Yamakawa is not prior art. App. Br. 9. More specifically,
Appellants assert that the present invention is a continuation of
U.S. Application Serial No. 12/173,375 filed on July 17, 2008, which claims
priority to Provisional Application Serial No. 60/950,797, filed on July 19,
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2007. Appeal Br. 9. Appellants further assert that “[a]s set forth in
MPEP 706.02, if the application properly claims benefit under 35 U.S.C.
119(e) to a provisional application, the effective filing date is the filing date
of the provisional application for any claims which are fully supported under
the first paragraph of 35 U.S.C. 112 by the provisional application.” App.
Br. 9. Appellants argue that “[i]n this instance, claim 10 is fully supported
by the provisional application and by U.S. Pat. Application Serial No.
11/462,089, the entire disclosure of which is incorporated by reference
therein for all purposes.” Id. Thus, Appellants argue, “[b]ecause Yamakawa
is available as prior art only as of March 20, 2008 and the instant application
has an effective filing date of July 19, 2007, Yamakawa is not available as
prior art.” Id.
The Examiner does not dispute that independent claim 10 is entitled to
the provisional application’s July 19, 2007 filing date. But for the reasons
set forth below, Appellants have not established that claim 16 is entitled to
any date earlier than the parent ’375 Application’s July 17, 2008 priority
date. Although we are entering a new ground of rejection of claim 10 as
indefinite under pre-AIA Section 112, second paragraph, to further
prosecution we will consider the prior-art status of Yamakawa both as to
claim 10’s earlier priority date and to claim 16’s later priority date.
YAMAKAWA’S PRIOR-ART STATUS RELATIVE TO CLAIM 10’S PRIORITY
DATE OF JULY 19, 2007:
The Examiner determines that Yamakawa is a 35 U.S.C. § 371
national stage application of PCT application PCT/JP2006/318633, filed on
September 20, 2006 with a publication date of March 29, 2007, “which is
prior to the effective filing date of the claimed invention on July 19, 2007.”
Ans. 11–12. The Examiner states that “because the national stage entry
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Yamakawa (US 2009/0236404) duly serves as an English translation of the
PCT publication, the Examiner respectfully submits that Yamakawa is
available as prior art as of March 29, 2007 under 35 USC 102(a) (Pre-AIA).”
Id. at 12–13.
Appellants respond that the Examiner’s Final Office Action relied on
the U.S. published patent application, not the PCT, and that the U.S. patent
publication is not prior art. Reply Br. 3–4. Appellants argue that the U.S.
patent application was filed on March 20, 2008, after the effective filing date
of the present application, and cannot be prior art under 35 U.S.C.
§ 102(e)(1) (pre-AIA) in view of its status as a U.S. Application. Id. at 4.
Appellants further argue that the PCT from which the U.S. application
is a national stage “was filed and published in Japanese” and therefore
“cannot be prior art under 35 U.S.C. § 102(e)(1) (pre-AIA) in view of the
treaty because it was not ‘published under Article 21(2) of such treaty in the
English language.’” Id. Appellants argue that the Examiner erred by relying
on the PCT’s March 29, 2007 publication date (in Japanese) because “the
publication data of a PCT is absolutely irrelevant to a United States
Application Publication’s status as prior art.” Id. Appellants argue that they
are entitled to notice of intent to rely on the PCT, because they do not
necessarily concede that the U.S. application is an accurate translation of the
PCT and they were deprived of the opportunity to swear behind the PCT’s
publication date, which is only a few months before the effective filing date
of their application. Id.
We agree with Appellants that the Examiner has not established that
Yamakawa’s US application constitutes prior art relative to independent
claim 10. The Examiner does not dispute that the Yamakawa U.S.
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Application is available as prior art only as of March 20, 2008—after
Appellants’ claimed effective filing date. Ans. 10. As to reliance on the
PCT filing date, Section 102(e) (pre-AIA) states that a U.S. application
based on an international application can rely on the international
application “only if the international application designated the United States
and was published under Article 21(2) of such treaty in the English
language.” 35 U.S.C. § 102(e)(2) (pre-AIA) (emphasis added). Because the
PCT here was published in Japanese, it cannot be relied on for purposes of
prior art under Section 102(e).
YAMAKAWA’S PRIOR-ART STATUS RELATIVE TO CLAIM 16’S PRIORITY
DATE OF JULY 17, 2008:
Appellants have not overcome the Examiner’s finding that the
Yamakawa U.S. Application is prior art to claim 16. Although Appellants
assert that “claim 10 is fully supported by the provisional application,” they
make no such statement about claim 16. See Appeal Br. 9. And in fact,
claim 16 includes the additional limitation, not found in claim 10, that the
nano-silver paste includes “about 10 to about 15 percent by weight capping
agent.” Appellants have not demonstrated that this limitation was present in
or supported either by Provisional Application No. 60/950,797, upon which
the present application claims priority, or by U.S. Pat. Application Serial
No. 11/462,089, which the provisional application incorporates by reference.
Our review of the provisional application reveals that it includes the
statement that “a desirable amount of capping agent is in the range of about
10–14%wt,” but this range is not the same as the broader range, “about 10 to
about 15 percent by weight capping agent,” as recited in claim 16.
Therefore, Appellants have not demonstrated that claim 16 is entitled to
claim priority based on the provisional application.
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As such, the effective filing date for claim 16 is July 17, 2008.
Because the Yamakawa U.S. Application was filed in the United States as a
National Application, was issued as U.S. Patent No. 7,766,218, and has a
371(c) date of March 20, 2008, Yamakawa is available as prior art under
35 U.S.C. 102(e) relative to claim 16.
B. Obviousness of Claim 16 over Yamakawa, Green, and Li.
Because Yamakawa is available as prior art to claim 16, we now
consider the Examiner’s rejection of claim 16 based on Yamakawa, Green
and Li. The Examiner finds that Yamakawa discloses a nano-silver paste
comprising 20–80 percent by weight nano-silver particles. Final Act. 13.
The Examiner finds that Yamakawa does not disclose a capping agent, but
that this limitation is disclosed by Green. Id. (citing Green, p. 3005). The
Examiner further finds that Green does not specify a weight percent of the
capping agent of about 10–15 wt%, but that this range is disclosed by Li,
which discloses a 1:1 mole ratio of capping agent to nanoparticle, which
“can be equivalent to about 10–15 by weight % capping agent.” Id. (citing
Li Abstract, ¶ 27). The Examiner concludes that:
It would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art to
which the claimed invention pertains to have constructed
Yamakawa’s device with Green’s capped metal particles and
Li’s nanoparticles comprising less than a 1: 1 mole ratio of
capping agent to nanoparticle in order to inhibit agglomeration,
increase processability, and inhibit the effects of dipole-dipole
interactions, as suggested by Green at page 3002, col. 2, bottom,
and to remove unwanted side effects of the nanomaterial
synthesis process, such as the use of high reaction temperature,
as suggested by Li at page 2, lines 1–7. Additionally, the capping
agent range from 10 to 15 percent, based on the weight of the
nanomaterial, would have been obvious to one of ordinary skill
in view of either Green or Li, separately or in combination,
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[because] it has been held that where the general conditions of a
claim are disclosed in the prior art, discovering the optimum or
workable ranges involves only routine skill in the art. In re Aller,
105 USPQ 233.
Id. at 14.
Appellants argue that
one skilled in the art would not have looked to Green to cure the
deficiencies of Yamakawa because Yamakawa describes various
methods of producing non-spherical particles that would not
require the use of a capping agent, nor would one skilled in the
art have chosen to use a capping agent in the method described
by Yamakawa.
Appeal Br. 10. Appellants do not submit any evidence in support of this
proposition. Id.
Appellants also argue that the concentrations in Li are for
semiconductor nanoparticles (SNP), and there is no teaching that “the ratio
of capping agent to SNP described by Li would be applicable to nano-silver
particles.” Id. Appellants further assert that “[s]emiconductor nanoparticles
are not the same as and do not encompass nano-silver particles and it has not
been shown that the concentration of capping agent relative to SNP can be
optimized to demonstrate the claimed concentration of capping agent for
nano-silver particles.” Id.
The Examiner responds that “Green espouses the many benefits of the
use of a capping agent,” including that the “presence of the capping agent is
essential in preparing nanosized particles as this inhibits agglomeration
and increases processability ….” Ans. 13–14 (emphasis in original) (citing
Green 3002, col. 2). The Examiner further finds that “Yamakawa’s silence
about the use, or non-use, of a capping agent does not imply that a person of
ordinary skill would not have constructed Yamakawa’s composition with a
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capping agent as described by Green.” Id. at 13. “Therefore,” the Examiner
finds, “a person of ordinary skill would not construe Yamakawa’s silence
about a capping agent as a ‘teaching away’ from the use of a capping agent.”
Id.
We determine that the Examiner has made a prima facie case that one
of ordinary skill would have found it obvious to combine Yamakawa’s nano-
silver particles with a capping agent as taught by Green. Green provides
motivation to use a capping agent when preparing nanosized particles (such
as those in Yamakawa) because Green explains that “[t]he presence of the
capping agent is essential in preparing nanosized particles as this inhibits
agglomeration and increases processability.” Green p. 2. Appellants
provide no evidence for their assertion that the non-spherical particles of
Yamakawa “would not require the use of a capping agent, nor would one
skilled in the art have chosen to use a capping agent in the method described
by Yamakawa.” See Appeal Br. 10. This assertion, therefore, is simply
attorney argument, and we find that this unsupported argument does not
overcome the prima facie case of unpatentability made by the Examiner.
See MPEP 2145 (“arguments of counsel cannot take the place of factually
supported objective evidence”).
We also determine that the Examiner has made a prima facie case that
it would have been obvious to combine Li with Yamakawa and Green.
Appellants do not dispute that Li discloses about 10 to 15 weight percent of
a capping agent to nanoparticles, but merely argues that the specific type of
nanoparticles in Li (semiconductor nanoparticles) is different from those in
the claim (silver nanoparticles). See Appeal Br. 10.
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We agree with the Examiner that it would have been obvious for a
person of ordinary skill to select the range of nanoparticles in Li in a process
of optimizing the range of capping agent to nanoparticles in Yamakawa. See
Aller, 220 F.3d 458 (“No invention is involved in discovering optimum
ranges of a process by routine experimentation.”). Appellants have failed to
sufficiently demonstrate otherwise, such as by providing sufficient
explanation or evidentiary support demonstrating that the differences
between silver nanoparticles and semiconductor nanoparticles are such that a
person of ordinary skill would have avoided the ranges for the capping agent
set forth in Li, found them to be irrelevant, or otherwise not render the
ranges obvious to try.
We therefore sustain the Examiner’s rejection of claim 16 based on
Yamakawa, Green, and Li.
C. New Ground of Rejection of Claim 16 Based on
Yamakawa’s PCT Publication
We further determine that the Yamakawa Japanese PCT publication
WO 2007/034833 (the “Yamakawa PCT”) is prior art. The Yamakawa PCT
indicates a publication date of March 29, 2007, which is earlier than
Appellants’ claimed effective filing date of July 19, 2007. Therefore the
Yamakawa PCT is available as prior art to claims 10 and 16 under 35 U.S.C.
§ 102(a). Because the Yamakawa PCT is prior art, we determine that a new
ground of rejection is appropriate for claim 16 substituting the Yamakawa
PCT for the Yamakawa U.S. published application (US 2009/0236404) in
the Examiner’s rejections. In doing so, we rely on the disclosure of
Appeal 2017-009009
Application 14/027,530

18
Yamakawa’s U.S. published application as an English translation of the
Yamakawa PCT.4
As discussed above, we agree with the Examiner that claim 16 is
unpatentable over Yamakawa in view of Green and Li. We therefore enter a
new ground of rejection of claim 16 based on the Yamakawa PCT in view of
Green and Li pursuant to our discretionary authority under 37 C.F.R.
§ 41.50(b). 5

DECISION
We enter new grounds of rejection of claims 10–12, 14, 15, and 25 as
being indefinite under pre-AIA Section 112, second paragraph.
We reverse pro forma the Examiner’s obviousness rejections of
claims 10, 14, 15 and 25 based Osako and Green, of claim 11 over Osako,
Green, and Collins, of claims 16–18 over Osako, Green, and Li, and claims
12 and 19 over Osako, Green, Collins, and Li.
We sustain the Examiner’s rejection of claim 16 based on Yamakawa,
Green, and Li.
We enter a new ground of rejection of claim 16 pursuant to 37 C.F.R.
§ 41.50(b) based on the Yamakawa PCT, Green and Li.

4 We also note that an English Translation of the Yamakawa PCT is
available on Public Pair in the file wrapper of U.S. Patent Application
No. 12/067,648.
5 On any further prosecution, the Examiner should consider whether claims
17–19 and 26, which are dependent on claim 16, patentably distinguish over
the Yamakawa PCT in view of the prior art used by the Examiner in the
rejections of those dependent claims based on Osako.
Appeal 2017-009009
Application 14/027,530

19
Rule 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Rule 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(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. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Pursuant to 37 C.F.R. § 1.136(a)(1)(iv), no time period for taking any
subsequent action in connection with this appeal may be extended. See
37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART
37 C.F.R § 41.50(b)