Pickett, Nigel et al.Download PDFPatent Trials and Appeals BoardOct 9, 201914483870 - (D) (P.T.A.B. Oct. 9, 2019) Copy Citation 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. 14/483,870 09/11/2014 Nigel Pickett 038-0088US 6701 15971 7590 10/09/2019 Nanoco c/o Blank Rome LLP 717 Texas Avenue, Suite 1400 Houston, TX 77002 EXAMINER CLEVELAND, MICHAEL B ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 10/09/2019 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): houstonpatents@blankrome.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIGEL PICKETT, STEVEN DANIELS, OMBRETTA MASALA, and NATHALIE GRESTY Appeal 2019-000554 Application 14/483,870 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and MARK NAGUMO, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Primary Examiner’s final decision to reject claims 17–21 and 23–25.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42—i.e., “Nanoco Technologies Ltd.” as identified in the Application Data Sheet filed September 11, 2014. The Appellant is also listed as the real party in interest (Appeal Brief filed April 30, 2018 (“Br.”) at 3). 2 See Br. 8–14; Examiner’s Answer entered August 16, 2018 (“Ans.”) at 3– 7; Final Office Action entered June 1, 2017 (“Final Act.”) at 3–7. Appeal 2019-000554 Application 14/483,870 2 BACKGROUND The subject matter on appeal relates to metal oxide nanoparticles prepared by reacting nanoparticle precursors in the presence of molecular cluster compounds acting as seeds or templates upon which nanoparticle growth is initiated (Specification filed September 11, 2014 (“Spec.”) ¶ 25 and Abstract). Representative claim 17 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 17. A nanoparticle comprising: a metal oxide crystalline core comprising a first metal; a reacted form of a molecular cluster compound comprising a second metal; and an outer capping layer selected from the group consisting of phosphines, phosphine oxides, alkyl phosphonic acids, alkylamines, arylamines, pyridines, thiols, long chain fatty acids, and thiophenes; wherein the reacted form of the molecular cluster compound is contained within a layer comprising the metal oxide crystalline core, and the first metal and the second metal are different. (Br. 16 (emphases added)). REJECTION ON APPEAL Claims 17–21 and 23–25 stand rejected under 35 U.S.C. § 103 as unpatentable over Pueyo et al.3 (“Pueyo”), Pickett,4 Mushtaq et al.5 (“Mushtaq”), and Wong et al.6 (“Wong”). 3 Carlos Lizandra Pueyo et al., Molecular Precursor Route to a Metastable Form of Zinc Oxide, 22 CHEM. MATER. 4263–70 (2010). 4 US 2007/0104865 A1, published May 10, 2007. 5 US 2008/0160306 A1, published July 3, 2008. 6 US 2009/0233090 A1, published September 17, 2009. Appeal 2019-000554 Application 14/483,870 3 DISCUSSION 1. Grouping of Claims The Appellant relies on the same arguments for all claims on appeal, focusing only on independent claim 17 (Br. 9–14). Therefore, we decide this appeal on the basis of claim 17, which we designate as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). Claims 18–21 and 23–25 stand or fall with claim 17. 2. The Examiner’s Position The Examiner finds that Pueyo describes crystalline core zinc oxide (ZnO) nanoparticles, which are formed via growth-wise reaction of a molecular cluster compound such as [MeZnOtBu]4 (Final Act. 4 (relying on Pueyo’s Scheme 2 described at 4265, 4269)). The Examiner finds that although Pueyo does not explicitly teach reacting a molecular cluster compound comprising a second metal different from the first metal in the metal oxide as required by claim 17 (“reacted form of a molecular cluster compound comprising a second metal . . . the first metal and the second metal are different”), the Examiner explains that the patentability of the claim does not necessarily depend on the method of its production but, rather, on the product itself (Final Act. 4, 7; Ans. 3–4). Specifically, the Examiner finds that US 7,803,423 B2, which issued to O’Brien et al. (“O’Brien”) on September 28, 2010 and is incorporated by reference in the current Specification (Spec. ¶ 26), demonstrates that the associated ligands of the molecular cluster compounds in a reaction similar to that disclosed for the claimed nanoparticles would be cleaved off (Ans. 4 (citing O’Brien, Fig. 3)). The Examiner finds that “[f]or example, the resulting formed nanoparticle may be comprised of a CdO core (i.e. metal oxide core) that, Appeal 2019-000554 Application 14/483,870 4 firstly, has an outer capping layer on a surface thereof and, secondly, contains ZnO or ZnSe (i.e. reacted form of a metal-comprising molecular cluster compound) at a central seeding region therefor” (id. at 4). Moreover, the Examiner finds that both Pickett and Mushtaq teach reacting a molecular cluster compound with a different metal from that in the metal oxide during a metal oxide’s formation (Final Act. 4–5). Based on these findings, the Examiner concludes that a person having ordinary skill in the art would have substituted Pueyo’s [MeZnOtBu]4 molecular cluster compound with either Pickett’s or Mushtaq’s molecular cluster compound having a metal different from that in the metal oxide “because such a usage would allow for a facilitation in the sourcing of the raw materials needed to form or grow [the] core nanoparticle[s]” and “the simple substitution of one known element for another to obtain predictable results [would have been] prima facie obvious” (id. at 5). As for the “outer capping layer” limitations recited in claim 17, the Examiner finds that Pueyo teaches a poly (vinyl pyrrolidone) (PVP) outer capping layer that serves to stabilize the core ZnO nanoparticle but not any of the specific outer capping layer materials specified in claim 17 (id. at 6). The Examiner finds, however, that Wong teaches an outer thiol capping agent as advantageous and, therefore, concludes that a person having ordinary skill in the art would have substituted Pueyo’s PVP outer capping layer in Pueyo with Wong’s thiol outer capping layer because a thiol outer capping layer would be expected to provide successful stabilization of the metal oxide nanoparticles and “the simple substitution of one known element for another to obtain predictable results [would have been] prima facie obvious” (id.). Appeal 2019-000554 Application 14/483,870 5 3. The Appellant’s Contentions The Appellant contends that the prior art references do not teach or suggest all the limitations recited in claim 17 (Br. 9). Specifically, the Appellant argues that Pueyo’s final product (i.e., ZnO core nanoparticle) “is only ZnO rather [than] a nanoparticle comprising a reacted form of a molecular cluster compound contained within a layer comprising a metal oxide crystalline core as presently claimed” (id.). That is, the Appellant urges that, in Pueyo’s Scheme 2, “[a] reacted form of the molecular cluster is not contained within a layer of the ZnO metal oxide crystalline core as presently claimed” (id. at 10). Regarding Pickett and Mushtaq, the Appellant argues that the combination of these references with Pueyo fails because: (i) “substituting the organometallic zinc oxide starting material of Pueyo with a molecular cluster compound of either Pickett or Mushtaq would merely result in the chemical conversion of said molecular precursor compound into a corresponding core nanoparticle under the teachings of Pueyo” (id. at 11); (ii) “Pueyo contains no indication that the formation of ZnO nanoparticles would require using, or even hypothetically could use, organometallic zinc oxide and a molecular cluster compound having a metal different than zinc” (id.); (iii) “[t]he desire in Pickett and Mushtaq to have a good crystal match compatibility between the molecular cluster compound and the core nanoparticle to be formed thereon do [sic] not matter in Pueyo” (id. at 11–12); Appeal 2019-000554 Application 14/483,870 6 (iv) Pueyo’s nanoparticle formation differs significantly from that described in either Pickett or Mushtaq such that the proposed combination of these references would change Pueyo’s principle of operation (id. at 12); and (v) neither Pickett nor Mushtaq teaches the use of oxygen as an element in the metal oxide nanoparticle formed (id. at 13–14). As for Wong, the Appellant does not dispute the Examiner’s combination of this reference with Pueyo to account for the outer capping layer limitation (id. at 9–14). Rather, the Appellant merely argues that Wong does not cure the alleged deficiencies in the Examiner’s combination of Pueyo, Pickett, and Mushtaq (id. at 14). 4. Opinion The Appellant’s arguments fail to identify reversible error in the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Contrary to the Appellant’s belief, both Pickett and Mushtaq would have suggested to a person having ordinary skill in the art the formation of crystalline core metal oxide nanoparticles according to a technique that is indistinguishable from that disclosed in the current Specification and recited in claim 17. Consistent with the Examiner’s findings (Final Act. 4–5, 7; Ans. 5–7), Pickett describes nanoparticles prepared by converting a precursor composition in the presence of a molecular cluster compound that acts as a seed or nucleation point upon which nanoparticle growth is initiated, which is the same technique described in the current Specification (compare Pickett ¶ 18 with Spec. ¶ 26). As in the present invention, Pickett teaches that the nanoparticles may be formed as quantum dots or nanocrystals (compare id. ¶¶ 30, 59, 87 with Spec. ¶ 2). Pickett further Appeal 2019-000554 Application 14/483,870 7 discloses that the nanoparticles may include a core material that may be selected from various options such as a Group IIB–VIB (12–16) material consisting of a first element from group 12 of the periodic table and a second element from group 16 of the periodic table, including ZnO, which is disclosed as suitable in the current Specification (compare Pickett ¶¶ 59, 61– 63, 110 (disclosing ZnO) with Spec. ¶ 37). As for the molecular cluster compound, Pickett teaches, e.g., [Et3NH]4Cd10Se4(SPh)16] (Pickett ¶ 100), which is the same molecular cluster compound recited in dependent claim 23 (Br. 16). As for the outer capping layer, Pickett discloses various options such as HDA (hexadecylamine), which is the same compound disclosed in the current Specification (compare Pickett ¶¶ 22, 130–132 with Spec. ¶ 52). Similarly, Mushtaq would also have suggested crystalline core nanoparticles using a technique that is indistinguishable from that disclosed for the claimed invention (Mushtaq ¶¶ 22, 28, 29, 35, 38, 46, 54–55, 331– 334). Given the disclosures in the prior art references including Pickett and Mushtaq, we conclude that a person having ordinary skill in the art would have found it obvious to prepare crystalline core nanoparticles by reacting a Group IIB–VIB (12–16) material consisting of a first element from group 12 of the periodic table and a second element from group 16 of the periodic table, such as ZnO, in the presence of a molecular cluster compound, such as [Et3NH]4Cd10Se4(SPh)16], and then providing an outer capping layer, such as HDA, to stabilize the nanoparticles, thus arriving at nanoparticles falling within claim 17’s scope. See, e.g., Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364–65 (Fed. Cir. 2012) (“strong case of obviousness” exists where the combination of ingredients recited in the Appeal 2019-000554 Application 14/483,870 8 claims were based on selections from a finite number of identified, predictable solutions); Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [reference] discloses a multitude of effective combinations does not render any particular formulation less obvious.”). We also find no persuasive merit in the Appellant’s argument that Pueyo discloses only ZnO and not “the reacted form of the molecular cluster compound . . . contained within a layer comprising the metal oxide crystalline core” (emphasis added) as recited in claim 17. As the Examiner succinctly points out (Ans. 3–4; Final Act. 7), the phrase “reacted form” encompasses situations in which the ligands in the molecular cluster compound are cleaved. Even the Inventors’ disclosed method for forming the nanoparticles appears to result in capped nanoparticles in which the molecular cluster compound is cleaved, leaving only a metal chalcogenide with a HDA capping layer (see Fig. 3 of O’Brien (incorporated by reference in Spec. ¶ 26)). The Appellant does not dispute the Examiner’s position in this regard with any reasonable specificity. For these reasons, and those well-stated by the Examiner, we uphold the Examiner’s rejection. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Evidentiary Basis Affirmed Reversed 17–21, 23–25 103 Pueyo, Pickett, Mushtaq, Wong 17–21, 23– 25 Appeal 2019-000554 Application 14/483,870 9 Claims Rejected 35 U.S.C. § Evidentiary Basis Affirmed Reversed Overall Outcome 17–21, 23– 25 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 Copy with citationCopy as parenthetical citation