Update on Nanotech-related Initiatives and Examination at the USPTO

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Update on Nanotech-related Initiatives and
Examination at the USPTO

• Dave T. Nguyen, USPTO
• Supervisory Patent Examiner, Art Unit 1633
• Biotechnology, Pharmaceuticals, Organic Chemistry
• Tel [phone]
• Email Dave.Nguyen_at_uspto.gov

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Outline

• Overview
• Classification
• Industry/Academia-USPTO interaction
• Continuing Education for Nano-Examiners
• Resources for Prior Art Search and Examination
• Patenting Nanotechnology

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Technology Centers

• 7 Technology Centers (TCs)
• Biotechnology, Organic Chemistry (TC 1600)
• Chemical and Materials Engineering (TC 1700)
  Designs Patents (TC 2900)
• Computer Architecture Software (TC2100)
• Communications (TC 2600)
• Semiconductors, Electrical Optical Systems
  Components (TC 2800)
• Transportation, Construction, Agriculture,
  National Security Electronic Commerce (TC 3600)
• Mechanical Engineering, Manufacturing and
  Products (TC 3700)
• About 300 Art Units (13-18 examiners per Art
  Unit)
• average 40 Art Units per Technology Center
• About 4200 Patent Examiners
• average 600 Examiners per Technology Center

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Nanotech Patents and Pre-grant Publications
Distribution Across Technologies
(Years 74-05) TC 1600
TC 1700 TC 2100, 2600, 2800 TC
3600, 3700 Biotechnology
Chemical Electrical
Mechanical 823
729 958
652
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Nanotechnology Subject Matter in TC 1600

• Biosensors
• biochips
• nanotubes and nanowires as sensors
• arrays
• nanoscale dimensions of embodiments on the
  sensors
• Imaging
• nanoparticles as labels
• light emitting (i.e. fluorescent) compound
  attached to or within nanoparticle
• no light emitting compound detection via
  light-scattering (i.e. SPR)
• quantum dot based nanoparticles coated with DNA
  or proteins used in diagnostic assays.
• semiconductor nanocrystals as detectable labels

• BioDrug Delivery nanostructure
• lipid based nanocapsule
• fatty acid ester based nanocapsules
• polymeric nanosphere/nanocapsule
• polymer based micelles
• functionalized nano based structure composed of
  protein, peptide an/or nucleic acids
• Dendrimer
• self-assembled peptide-amphiphiles
• virus like particles
• quantum dot based nanoparticles coated with DNA
  or proteins used in therapy
• Medical devices coated with polymeric
  nanoparticles

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Diversity in Nanotechnology Patent and Pre-grant
Publications Assigned to TC 1600
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Classification Progress (1)

• Step-by-step approach to reclassification-a
  working committee composed of experienced
  classifying staffs, SPE(s) and Nano examiners was
  formed in late 2001.
• 11/2001-8/2004 - Actively working in developing a
  new nanotech cross-reference digest by
• Placement of nano-related documents from key word
  searches
• Cross-reference placements of newly issued US
  patents and US Pre-Grant Applications by
  examiners from the working committee
• 10/2004 - Established a new Nanotechnology cross
  reference Digest I, Class 977.
• 11/2005 Cross Reference Class 977, Subclasses
  700-963 replaces Digest I.

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Classification Progress (2)

• Class 977 Digest I (Oct. 2004) has now expanded
  from a single digest to a cross-reference art
  collection of 263 new subclasses
• Posted and searchable in mid-February 2006
• As of January 2006, up to about 3170 documents
  placed, including over 2650 patents and 515
  Pre-Grant Publications.
• Public Availability
• Expanded Nanotechnology Class 977 subclass
  schedule and definitions at
• http//www.uspto.gov/web/offices/opc/documents/18
  50.pdf

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Classification Progress (3)

• The public may now do a combination of a text
  query and a cross-reference class 977 search by
  following these steps at http//www.uspto.gov/patf
  t/index.html
• Step 1- choose either the Issued Patents or the
  Published Applications database
• Step 2 - select the Advanced Search option
• Step 3 enter your query and select years
  desired. Example, to search device and class
  977, subclass 931
• enter the query as -- device and ccl/977/931
  --
• Step 4 Hit the Search button
• Step 5 review search results

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Classification Progress (4)
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Classification Progress (5)

• The creation of cross reference Class 977
  Nanotechnology and its expanded 263 subclasses
  provides the USPTO with
• a consolidated area of search to supplement the
  patent application examination process.
• an enhanced search tool, whereby customers of the
  USPTO could select and combine a text search
  along with the cross-reference to class 977.
• a mechanism by which Nanotechnology-related US
  Patent activity can be analyzed by the USPTO and
  the public

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USPTO Nanotechnology Customer Partnership (NCP)

• Inaugural event at USPTO on Sept. 11, 2003
• Annual meetings April 20, 2004, May 4, 2005 and
  March 28, 2006
• Goals of the Partnership
• Sharing concerns and information
• Establishing technical training programs for
  examiners
• Helping identify sources of prior art
• Helping applicants better understand what we do,
  hopefully lead to better applications and better
  patents

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Nanotech Customer Partnership

• Contacts and Information
• To be added to the USPTO Nanotechnology Customer
  Partnership emailing list, to offer a speaker for
  technical training for USPTO examiners, or to
  suggest a source for searching nanotechnology-rela
  ted prior art
• Jill Warden, SPE 1743, 571-272-1267
  Jill.Warden_at_USPTO.GOV
•  
• For other general nanotechnology-related or
  examination-related issues
• Bruce Kisliuk, Group Director TC1600,
  571-272-0700 Bruce.Kisliuk_at_USPTO.GOV
•  

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Continuing Education For Nanotech-Examiners

• Monthly Atlantic Nano Forum Training
  http//www.atlanticnanoforum.org
• Nano Training Bootcamp 7/12/05-7/15/05 at George
  Washington University
• In-House Training/Seminar on Nanotech Related
  subject matter
• Resource Center provided by Scientific and
  Technical Information Center (STIC)

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Continuing Education Scientific and Technical
Information Center (STIC)
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Search Tools for Nanotechnology Nanotech-related
services offered by STIC
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(No Transcript)
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Examination Resource Creation of a Tag-Team of
Nanotech-Examiners in TC 1600

• Experienced Nano-Examiners identified and invited
  to join the Tag-Team for TC 1600 in January 2006
• Tag-Team finalized and created in March 2006
• Goals of the Tag-Team
• Enhancing proper assignments of nanotechnology
  applications
• Sharing resources on prior art
• Helping one another in examination on
  Nanotechnology
• Serving as a Points-of-Contact (POC) List for
  continuing education on
  Nanotechnology

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Examination Resource Creation of a Tag-Team of
Nanotech-Examiners in TC 1600
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Size Matters in Nanotechnology

• Case Law MPEP Related to Changes in
  Size/Proportion
• 35 USC 102 Inherency
• 35 USC 103 Obvious to make smaller
• 35 USC 112, 1st Paragraph, Enablement

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Case Law MPEP Related to Changes in
Size/Proportion

• In re Troiel, 124 USPQ 502, 505 (CCPA 1960)
• It is well established that the mere change of
  the relative size of the co-acting members of a
  known combination will not endow an otherwise
  unpatentable
• combination with patentability.
• In re Gardner v. TEC Systems, Inc., 220 USPQ 777,
  786
• (Fed. Cir. 1984)
• Where the only difference between the prior art
  and the claims was a recitation of relative
  dimensionswould not perform differently than the
  prior art device, the claimed device was not
  patentably distinct from the prior art device.
• Texas Instruments v. ITC, 231 USPQ 833, 840 (Fed.
  Cir. 1986)
• A mere change in size due to improved
  miniaturization by technological advance does not
  in itself save the accused devices from
  infringement.
• MPEP 2144.05
• Claimed elastomeric polyurethanes which fell
  within the broad scope of the references were
  held to be unpatentable thereover because, among
  other reasons, there was no evidence of the
  criticality of the claimed ranges of molecular
  weight or molar proportions.

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35 USC 102 Inherency

• In re Best, 195 USPQ 430, 433 (CCPA 1977 MPEP
  2111.04)
• The claiming of a new use, new function or
  unknown
• property which is inherently present in the
  prior art does
• not necessarily make the claim patentable.
• Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI, 1990
  MPEP 2111.04)
• In relying upon the theory of inherency, the
  examiner must provide a basis in fact and/or
  technical reasoning to reasonably support the
  determination that the allegedly inherent
  characteristic necessarily flows from the
  teachings of the applied prior art.
• Schering Corp. v. Geneva Pharm., 68 USPQ 1760,
  1763
• (Fed. Cir. 2003 MPEP 2111.04)
• Simply put, the fact that a characteristic is a
  necessary feature or result of a prior-art
  embodiment (that is itself described and enabled)
  is enough for inherent anticipation, even if that
  fact was unknown at the time of the prior
  invention.

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35 USC 103 Obviousness

• Arent inventors always motivated to make things
  smaller, faster, more sensitive? Maybe, but
• Obviousness Requires A Reasonable Expectation Of
  Success
• The prior art can be modified or combined to
  reject claims as prima facie obvious as long as
  there is a reasonable expectation of success. -
  In re Merck Co., Inc., 800 F.2d 1091 (Fed.
  Cir. 1986)

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35 USC 112, 1st Paragraph Enablement

• When is a nanotechnology claim not enabled?
• Analysis of the Wands Factors and undue
  experimentation are required.
• Example
• Claiming a process of making crystalline
  assembled nanostructures without reciting
  specific substrates, materials and steps
  employed, e.g., nano-scale lithography.

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35 USC 112, 1st Paragraph Enablement

• Wands Factor Analysis
• The breadth of the claim in relation to the
  disclosure.
• Working examples showing only nano-based
  lithography
• The nature of the invention and level of
  unpredictability at the time the invention was
  made
• Severe fluctuations both in positions and sizes
  do occur in self-assembled nanostructures,
  thereby causing a difficulty in predicting their
  energetic location and structures required for an
  envisioned property. See Herbert Kroemer, Phys.
  Sat. Sol. (a) 202, No. 6, 957-964, page 960,
  2005.
• Conclusion
• The disclosure may not provide sufficient
  information to enable a person skilled in the art
  to make and use the full scope of the claimed
  invention without undue experimentation.

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Contact Information

• Dave T. Nguyen
• SPE, Art Unit 1633
• Tel [phone]
• Email Dave.Nguyen_at_uspto.gov