The Research Foundation for The State University of New York

Patent Trials and Appeals Board

Aug 25, 2021

2020004119 (P.T.A.B. Aug. 25, 2021)

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.
13/632,674 10/01/2012 Sarbajit Banerjee 011520.01005 2189
26712 7590 08/25/2021
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
08/25/2021 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):
ipdocketing@hodgsonruss.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARBAJIT BANERJEE,
LUISA WHITTAKER-BROOKS,
CHRISTOPHER J. PATRIDGE, and
PETER MARLEY
Appeal 2020-004119
Application 13/632,674
Technology Center 1700
Before BRIAN D. RANGE, LILAN REN, and
JANE E. INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–7. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as The Research Foundation for the State
University of New York. Appeal Br. 2.
Appeal 2020-004119
Application 13/632,674

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to doped nanoparticles
having a desirable metal-insulator phase transition temperature. Spec. ¶ 3.
The material might be used, for example, as a “smart window” coating that
switches between infrared transmitting and infrared reflective as a function
of external temperature. Id. ¶ 5. Claim 1 is illustrative:
1. A VO2 nanoparticle doped with a plurality of metal
cations selected from the group consisting of K cations, Na
cations, Cs cations, Sr cations, Ba cations, Ca cations,W
cations, Mo cations, Ag cations, Pb cations Nb cations, Cr
cations, Al cations, Fe cations, Ti cations, Zr cations, Ta
cations, Sc cations, Ga cations, Cu cations, Co cations, Ni
cations, rare-earth element cations, and combinations thereof,
wherein the dopant is present in the nanoparticle at 0.1 to
10 % by weight,
wherein the dopants do not segregate into distinct phases
and the dopants are substitutionally incorporated within a VO2
structure such that they replace vanadium atoms in the VO2
structure;
and
wherein the nanoparticle exhibits a metal-insulator
transition at a temperature of from -200 °C to 350 °C.

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Sutorik et al. (“Sutorik”) US 2005/0227864 A1 Oct. 13, 2005
Yu et al. (“Yu”) US 2006/0131574 A1 June 22, 2006

2 In this Decision, we refer to the Final Office Action dated March 25, 2019
(“Final Act.”), the Appeal Brief filed November 25, 2019 (“Appeal Br.”),
the Examiner’s Answer dated March 13, 2020 (“Ans.”), and the Reply Brief
filed May 13, 2020 (“Reply Br.”).
Appeal 2020-004119
Application 13/632,674

3
Bujard et al. (“Bujard”) US 2007/0259182 A1 Nov. 8, 2007
Ribi US 2007/0273951 A1 Nov. 29, 2007
Samuel et al. (“Samuel”) US 2009/0321660 A1 Dec. 31, 2009
Lukehart et al.
(“Lukehart”)
US 2011/0085964 A1 Apr. 14, 2011
Buller et al. (“Buller”) US 2011/0146785 A1 June 23, 2011
Ozin et al. (“Ozin”) US 2013/0168228 A1 July 4, 2013

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1 and 5 under 35 U.S.C. § 103 as obvious over Samuel in view
of Sutorik and Ribi. Final Act. 2.
B. Claim 3 under 35 U.S.C. § 103 as obvious over Samuel in view of
Sutorik and Ribi in further view of Yu or Ozin. Id. at 4.
C. Claim 4 under 35 U.S.C. § 103 as obvious over Samuel in view of
Sutorik and Ribi in further view of Lukehart. Id. at 5.
D. Claim 6 under 35 U.S.C. § 103 as obvious over Samuel in view of
Sutorik and Ribi in further view of Buller. Id. at 6.
E. Claim 7 under 35 U.S.C. § 103 as obvious over Samuel in view of
Sutorik and Ribi in further view of Bujard. Id.

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
Appeal 2020-004119
Application 13/632,674

4
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
A reasonable expectation of success is a necessary part of a prima
facie case of obviousness. In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991);
see also KSR, 550 U.S. at 417 (“a court must ask whether the improvement
is more than the predictable use of prior art elements according to their
established functions” (emphasis added)). Whether or not a person of
ordinary skill in the art would have had a reasonable expectation that a
particular combination of references would work is a question of fact. Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies.
Because we decide this appeal based on a recitation in independent claim 1,
we focus our analysis on claim 1. This analysis is equally applicable to all of
the dependent claims.
The Examiner finds that Samuels teaches, for example, vanadium
oxide doped with europium. Final Act. 2 (citing Samuels). The Examiner
does not dispute Appellant’s position that vanadium oxide could refer to
species other than claim 1’s recited vanadium dioxide (VO2). Ans. 17.
Vanadium oxide can refer, for example, to VO2, V2O5, V2O3, or VO. Id. The
Examiner finds that Sutorik teaches using a dopant in an amount that does
not phase segregate to form a separate phase. Final Act. 3 (citing Sutorik).
The Examiner determines that it would have been obvious to incorporate this
Appeal 2020-004119
Application 13/632,674

5
teaching of Sutorik into Samuel “to have high strength and toughness.” Id.
The Examiner finds that Ribi teaches color change materials including
vanadium dioxide. Id. (citing Ribi). The Examiner determines that it would
have been obvious to use Ribi’s vanadium dioxide as the vanadium oxide of
Samuel “to have desired color change, levels or color hue change and
stability.” Id.
Appellant argues that a person of skill in the art would not have
combined the references’ teachings because there would not have been a
reasonable expectation of success. Appeal Br. 12. Appellant’s argument
persuades us of error. The Examiner provides evidence of a reason why a
person of skill in the art would have substituted vanadium dioxide for other
vanadium oxides of the combined Samuels and Sutorik process, but the
Examiner does not adequately establish, based on all evidence before us, that
a person of skill in the art would have reasonably had an expectation of
success in accomplishing this substitution. See, e.g., Ans. 21–22. In
particular, the preponderance of evidence before us indicates that at least the
Sutorik process would result in V2O5 particles rather than claim 1’s
vanadium dioxide particles. See January 6, 2017, Declaration of Dr. Sarbajit
Banerjee. The Examiner does not persuasively rebut this evidence and does
not, for example, identify what process a person of skill in the art would
have known to employ to reach the subject matter of claim 1.
The Examiner relies on the Manual of Patent Examining Procedure’s
explanation of when a reference is presumed operable. Ans. 22. The MPEP
states:
When the reference relied on expressly anticipates or makes
obvious all of the elements of the claimed invention, the
reference is presumed to be operable. Once such a reference is
Appeal 2020-004119
Application 13/632,674

6
found, the burden is on applicant to rebut the presumption of
operability.
MPEP § 2121(I). The present scenario is distinguishable from what the
MPEP contemplates in the above passage because none of the references
individually teach claim 1’s nanoparticle and because the Examiner has not
established that a person of skill in the art would have reasonably expected
success in creating claim 1’s nanoparticle based on the references’ combined
teachings.3 Moreover, as explained above, Appellant presented persuasive
evidence that at least one of the references’ processes (Sutorik) will not lead
to the nanoparticle of claim 1.
The Examiner’s treatment of the dependent claims including the
Examiner’s use of additional references for the dependent claims does not
cure the error we identify above. We, thus, do not sustain the Examiner’s
rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5 103 Samuel, Sutorik, Ribi 1, 5
3 103 Samuel, Sutorik, Ribi,
Yu, Ozin
3
4 103 Samuel, Sutorik, Ribi,
Lukehart
4
6 103 Samuel, Sutorik, Ribi,
Buller
6

3 Although the Examiner’s citation relates, strictly speaking, to enablement
of references rather than expectation of success, we address the citation here
because the issues are related in the present context.
Appeal 2020-004119
Application 13/632,674

7
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7 103 Samuel, Sutorik, Ribi,
Bujard
7
Overall
Outcome
1, 3–7

REVERSED