The Pen v. Vidal (23-2282): Federal Circuit Affirms Unpatentability of Nanoscale Organometals Application
The Pen challenged the USPTO’s rejection of US Application 16/104878, directed to true nanoscale one and two-dimensional organometals, before the Federal Circuit. In a 301-day appellate proceeding, the court found no reversible error and affirmed the unpatentability determination, leaving the application cancelled.
Federal Circuit closes the door on nanoscale organometals patent application
Case 23-2282 is an appeal filed August 16, 2023 by The Pen before the United States Court of Appeals for the Federal Circuit, sitting in the District of Columbia circuit. The underlying dispute concerns US Application No. 16/104878, a continuation application titled ‘True Nanoscale One and Two-Dimensional Organometals.’ The respondent is Katherine K. Vidal in her capacity as Under Secretary of Commerce for Intellectual Property and Director of the USPTO, represented by USPTO counsel including Amy J. Nelson and Farheena Yasmeen Rasheed.
The Federal Circuit closed the case on June 12, 2024, issuing a summary order affirming the USPTO’s finding of unpatentability. The court’s ‘AFFIRMED’ disposition means it found no reversible error in the agency’s invalidity or cancellation determination. For The Pen, the practical consequence is that the continuation application remains cancelled and the claimed nanoscale organometals subject matter is not patent-protected. The USPTO’s position — that the claims failed to meet patentability requirements — is now confirmed at the appellate level.
At 301 days from filing to disposition, the appeal resolved within a timeframe consistent with Federal Circuit practice for pro se or single-patent appeals. The public record does not disclose the specific grounds of unpatentability relied upon by the USPTO — whether anticipation, obviousness, or written description deficiency — nor does it reveal whether a full merits brief was submitted. What the record does confirm is that the appellate tribunal, after consideration, found the agency’s reasoning sound, which typically signals the rejection was well-grounded in prior art or statutory compliance failures.
Filing to Unpatentable in 301 days
301 days — resolved within a typical Federal Circuit appeal window of 12–18 months
Federal Circuit affirms: what the ruling means for both parties
Affirmance means no reversible error found in the USPTO ruling
When the Federal Circuit issues an ‘AFFIRMED’ disposition in a patent appeal from the USPTO, it confirms that the lower tribunal — here, the Patent Trial and Appeal Board or examining corps — committed no reversible legal or factual error. The appellate court applies deferential review to factual determinations and de novo review to questions of law. An affirmance does not necessarily endorse every line of reasoning below; it means the outcome was legally correct.
Appellate affirmanceApplication remains cancelled — nanoscale organometals claims extinguished
For The Pen, the Federal Circuit’s affirmance is a final adverse outcome at this appellate level. The continuation application US16/104878 remains unpatentable, and the claimed nanoscale one and two-dimensional organometals technology cannot be enforced as patent rights. Further pursuit would require a petition for rehearing en banc or a certiorari petition to the Supreme Court — both statistically rare paths to reversal. The commercial window for patent-based exclusivity on these specific claims appears effectively closed.
Claims extinguishedUSPTO’s unpatentability position survives Federal Circuit scrutiny
The USPTO, represented by Director Vidal’s office, successfully defended the agency’s patentability determination across both the administrative and appellate stages. The affirmance reinforces the agency’s examination or PTAB reasoning on this application and forecloses the applicant’s current appellate avenue. For the USPTO, this outcome is consistent with the high affirmance rate the Federal Circuit historically applies to agency determinations grounded in prior art analysis or statutory patentability requirements.
USPTO position upheldNanoscale organometals space: no new exclusive rights from this continuation
Companies operating in nanoscale materials, organometallic chemistry, or two-dimensional materials (graphene analogues, MXenes, MOFs) can note that the specific claims in US16/104878 will not generate an enforceable patent from this filing. The affirmance also suggests the prior art or disclosure landscape in this technical area was sufficiently dense to defeat the continuation claims. R&D teams working in 1D/2D organometals should still conduct FTO reviews against any granted related family members, as continuation siblings may remain active.
No exclusivity from this filingFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | The Pen | Individual | Pro se appellant — holder of US App. 16/104878, nanoscale organometals technologySearch in Eureka ↗ |
| Defendant | Katherine K. Vidal | Individual | Katherine K. Vidal, Director of the USPTO — respondent defending agency patentability rulingSearch in Eureka ↗ |
| Plaintiff counsel | The Pen | Attorney | Counsel for The PenSearch in Eureka ↗ |
| Plaintiff law firm | The Peoples Email Network | Law Firm | Representing The PenSearch in Eureka ↗ |
| Defendant counsel | Amy J. Nelson | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Defendant counsel | Farheena Yasmeen Rasheed | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Defendant counsel | Kakoli Caprihan | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Defendant counsel | Mary L. Kelly Ph.D. | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Defendant counsel | William LaMarca | Attorney | Counsel for Katherine K. VidalSearch in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Court of Appeals for the Federal CircuitSearch in Eureka ↗ |
Official order — verbatim text
The order — ‘THIS CAUSE having been considered, it is ORDERED AND ADJUDGED: AFFIRMED’ — is a summary disposition confirming the USPTO’s unpatentability ruling without elaborating grounds. At the Federal Circuit, such summary affirmances carry full precedential weight regarding the outcome, even absent a written opinion. The Basis of Termination as ‘Unpatentable’ confirms the claims did not survive examination or PTAB review. For The Pen, no further relief is available at this appellate level without a successful petition for rehearing or certiorari.
US16/104878 — True Nanoscale One and Two-Dimensional Organometals
US Application No. 16/104878, published as US20190010289A1, is directed to true nanoscale one and two-dimensional organometallic compounds — a technical domain at the intersection of organometallic chemistry and nanomaterials science. The ‘continuation’ designation indicates this application descends from an earlier parent filing, meaning it claims priority to prior disclosure while seeking independent claim coverage. The application number places filing in August 2018, at a time when 2D materials (post-graphene) were attracting significant research and IP activity globally.
Organometallic nanomaterials at the one- and two-dimensional scale have potential relevance in catalysis, electronics, sensing, and advanced coatings. The USPTO’s unpatentability finding — now affirmed by the Federal Circuit — suggests the claimed subject matter either lacked novelty over prior art, was found obvious, or failed to meet written description or enablement requirements. For competitors in nanoscale materials, the affirmance means these specific claims pose no enforcement risk, though related patents or applications in the same technical area should still be assessed independently.
Should your R&D team run an FTO against US16/104878?
Teams developing nanoscale organometallic materials, two-dimensional metal-organic frameworks, or related 1D/2D structures should note that US16/104878 itself is cancelled and poses no direct infringement risk. However, any related family members — parent applications, continuation-in-parts, or foreign counterparts — could still be live. Companies in advanced materials, semiconductor coatings, catalysis, or nanotechnology product development should conduct a full patent family FTO before commercialising products in this space.
PatSnap Eureka’s FTO Search Agent can rapidly map the entire US16/104878 patent family, identify live siblings with overlapping claim scope, and surface relevant prior art that informed the USPTO’s unpatentability ruling. This enables R&D and legal teams to build a defensible freedom-to-operate position across the nanoscale organometals landscape — not just against this cancelled application but across the broader competitive IP environment.
Run a freedom-to-operate analysis on US20190010289A1 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit appeals: nanoscale materials and USPTO unpatentability rulings
Explore Federal Circuit cases involving USPTO unpatentability affirmances in nanoscale materials, organometallics, and advanced 2D materials technology.
What this case signals for the nanoscale materials IP landscape
An affirmed unpatentability ruling at the Federal Circuit sets a high bar for any related continuation filings in the nanoscale organometals space.
Federal Circuit affirmances of unpatentability are difficult to reverse upstream
Once the Federal Circuit affirms an unpatentability finding, the remaining appellate options — en banc rehearing or Supreme Court certiorari — carry very low success rates. IP teams tracking this application or related family members should treat this as a near-final outcome and update freedom-to-operate assessments accordingly for the claimed nanoscale organometals subject matter.
Continuation application strategy in nanomaterials requires robust prior art separation
The cancellation of a continuation suggests the claims may not have been sufficiently differentiated from prior art relative to the parent application. In the competitive nanoscale materials space — where academic literature, government lab publications, and international filings are dense — continuation claims must be carefully scoped. Patent counsel should audit any pending continuations in this family for similar vulnerability.
Pen v Katherine — key questions answered
The Federal Circuit affirmed the USPTO’s finding of unpatentability for US Application 16/104878, covering true nanoscale one and two-dimensional organometals. The court found no reversible error in the agency determination. The case closed June 12, 2024, approximately 301 days after the appeal was filed.
US Application No. 16/104878 (published as US20190010289A1) is a continuation application directed to true nanoscale one and two-dimensional organometallic compounds. It sits at the intersection of organometallic chemistry and nanomaterials science, with potential relevance to catalysis, electronics, and advanced coatings. The application was cancelled following USPTO review, with that finding affirmed by the Federal Circuit.
In the context of a Federal Circuit appeal from the USPTO, ‘Unpatentable’ as the basis of termination indicates the claims in the application failed to satisfy one or more patentability requirements — potentially novelty, non-obviousness, written description, or enablement. The Federal Circuit’s affirmance confirms the USPTO’s determination was legally sound, though the specific grounds are not detailed in the public order.
Following a Federal Circuit affirmance, the remaining options are a petition for rehearing or rehearing en banc before the Federal Circuit, or a petition for writ of certiorari to the US Supreme Court. Both are statistically rare paths to success. No further administrative options at the USPTO level are available for cancelled claims confirmed unpatentable at this appellate stage.
The affirmance means US16/104878 itself poses no infringement risk, as the application is cancelled. However, companies operating in nanoscale organometallic materials should still conduct FTO assessments against any related family members — parent patents, continuation-in-parts, or foreign equivalents — that may have granted claim scope overlapping their products or processes.
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