Ex Parte 7927701 et al

Patent Trial and Appeal Board

May 26, 2016

95001936 (P.T.A.B. May. 26, 2016)

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.
95/001,936 04/12/2012 7927701 P2SI-P0001D1E1 4807
103460 7590 05/27/2016
Endurance Law Group, PLC
180 West Michigan Avenue
Suite 801
JACKSON, MI 49201
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PERFORMANCE POLYMER SOLUTIONS, INC.
Patent Owner, Appellant, and Cross-Respondent

v.

UNIVERSITY OF DAYTON RESEARCH INSTITUTE
Requester, Respondent, and Cross-Appellant
____________

Appeal 2015-007690
Inter partes Reexamination Control No. 95/001,936
United States Patent 7,927,701 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, DAVID M. KOHUT, and JENNIFER L.
McKEOWN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

2

Patent Owner and Requester both request rehearing of our decision
dated November 4, 2015 (“Dec.”), where we affirmed-in-part the
Examiner’s decision to (1) reject claims 1–5 as anticipated or obvious over
various prior art references, and (2) not reject those claims on other grounds.
See Request for Rehearing By Patent Owner filed December 3, 2015 (“PO
Req. Reh’g”); see also Request for Rehearing By Third Party Requester
filed December 4, 2015 (“TPR Req. Reh’g”).1

SUMMARY OF THE BOARD’S DECISION
As summarized on page 22 of our decision, we held the following:
Under 35 U.S.C. § 102, the Examiner did not err in rejecting (1)
claims 1–4 as anticipated by Chen et al.,2 and (2) claims 1 and 5 as
anticipated by Thostenson, but erred in rejecting (1) claims 1–5 as
anticipated by Olry et al., and (2) claims 2–4 as anticipated by Thostenson.
Under 35 U.S.C. § 103, the Examiner erred in rejecting (1) claim 5 as
obvious over Chen, Olry, Thostenson, and Zhu; (2) claims 1–5 as obvious
over Thostenson, Chen, and Olry; and (3) claims 1–5 as obvious over Zhu,
Chen, and Olry.

1 Throughout this decision, we refer to (1) the Board decision dated
November 4, 2015 (“Dec.”); (2) Patent Owner’s Request for Rehearing filed
December 3, 2015 (“PO Req. Reh’g”); (3) Requester’s Comments
Regarding Patent Owner’s Rehearing Request filed January 4, 2016 (“TPR
Comments”); (4) Requester’s Request for Rehearing filed December 4, 2015
(“TPR Req. Reh’g”); (5) Patent Owner’s Comments Regarding Requester’s
Rehearing Request filed January 4, 2016 (“PO Comments”); and (6) Patent
Owner’s Appeal Brief filed January 22, 2014 (“PO App. Br.”).
2 The cited references are cited in full on page 3 of our decision, and we omit
those citations here for brevity.
Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

3

Under § 102, the Examiner did not err in declining to reject (1) claim
5 as anticipated by Chen, and (2) claims 1–5 as anticipated by Zhu.
Under § 103, the Examiner did not err in declining to reject (1) claims
1–5 as obvious over Olry, Chen, Thostenson, and Zhu, and (2) claims 1–4 as
obvious over Chen, Olry, Thostenson, and Zhu.
Claim 1 recites, in pertinent part, a carbon reinforced continuous fiber
preform produced by the process in steps (a)–(d) of the claim. In our
decision, we noted, among other things, that the reexamined U.S. Patent
7,927,701 B2 (“the ’701 Patent”) defines the term “preform” as “a
continuous fiber yarn, or broad good produced from the yarn (including non-
woven mats, woven or braided constructions) and assemblies of preforms
further constructed.” See Dec. 11 n.5 (quoting ’701 Patent, col. 1, ll. 50–
54); see also Dec. 12 (citing this definition).

PATENT OWNER’S REHEARING REQUEST
Patent Owner argues that, in sustaining the Examiner’s anticipation
rejection over Chen, we misapprehended or overlooked Patent Owner’s
argument on page 11 of the Appeal Brief that Chen’s fibers are not yarns—a
crucial requirement for a preform under the ’701 Patent’s definition of the
term. PO Req. Reh’g 1–3. According to Patent Owner, Chen’s “mass of
tangled fibers” in no way resembles a yarn, particularly under the definition
of “yarn” that we cited in connection with the proposed anticipation
rejection over Zhu in Requester’s cross appeal, namely “[a] continuous
strand of two or more plies of carded or combed fibers twisted together, or a
single filament of natural or synthetic fibers used for weaving or knitting.”
Id. 2 (citing Dec. 20–21).
Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

4

But as Requester indicates, we were unpersuaded by Patent Owner’s
yarn-based argument in connection with Chen, and held that Patent Owner
did not persuasively rebut the Examiner’s finding that Chen’s network of
randomly-distributed fibers can be formed of continuous fibers, such as
cords. TPR Comments 3 (quoting Dec. 12). Accord TPR Comments 4
(“[T]he Board properly concluded that Chen’s fibers, when considered either
individually or as a network constitute a preform, i.e., a broad good
produced from cord-based fibers.”) (emphasis added). Notably, Patent
Owner does not argue that cords and yarns are materially different structures
as Requester indicates. Id. 3 (noting this undisputed point).
In any event, Chen’s cord-based fibers reasonably comport with the
definition of “yarn.” As Requester indicates, a “cord” is defined, in
pertinent part, as “a long, flexible, cylindrical construction of natural or
synthetic fibers twisted or woven together,” and a “fiber” is defined, in
pertinent part, as “filaments collectively” or “material composed of
filaments.” TPR Comments 2 (quoting dictionary definitions of these
terms). Given these plain meanings, Chen’s cord-based fibers reasonably
constitute “continuous fiber yarns,” for they comprise at least a single
filament of continuous fibers used for weaving or knitting under the above-
noted definition of “yarn.” Although Chen’s fibers are not woven, but rather
oriented randomly in a network as noted in column 4, line 55, there is
nevertheless no persuasive evidence on this record proving that these cord-
based fibers are incapable of being woven if such a use was intended.
Nor is there persuasive evidence on this record proving that Chen’s
cord-based fibers are incapable of their alternative intended use, namely
knitting. That Chen’s cords are knotted or secured at their crossings in
Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

5

column 4, lines 58 to 60 suggests they are so capable. In any event, Chen’s
network of cord-based fibers is a “broad good” produced from yarns and,
therefore, is a preform of continuous fiber under the definition in column 1,
lines 51 to 54 of the ’701 Patent. That preforms under this definition include
non-woven mats only bolsters this conclusion.
Moreover, Patent Owner admits in the Appeal Brief that Chen
discloses a preform. See, e.g., PO App. Br. 13 (referring to “the preform of
Chen”); see also id. 14 (referring to “Chen’s preform”). Patent Owner
similarly acknowledges Chen’s preform in the Appeal Brief filed December
11, 2014 in the related appeal for Reexamination Control No. 95/001,935
(“’935 PO App. Br.”), albeit a preform that is said to be made of discrete,
interconnected, and randomly-oriented fibers. See ’935 PO App. Br. 33
(“Chen does not teach a preform of continuous fiber, but a preform made of
plurality [sic] of ‘discrete’ and ‘interconnected, randomly oriented fibers’
(plural).”) (underlining in original and italics added for emphasis); see also
id. at 34 (referring to Chen’s “3-D preform”); id. at 35 (referring to “the
preform of Chen” in connection with the arguments for claim 15). Although
Patent Owner’s admissions in both appeals are made in connection with
obviousness rejections based, in part, on the Chen reference, these
acknowledgements nonetheless inform our understanding of Patent Owner’s
position regarding Chen’s disclosure as it pertains to the recited preform and
are, therefore, relevant here.
In summary, as noted above and in our decision, we see no error in the
Examiner’s finding that Chen’s preform is a “continuous fiber preform”
under the term’s broadest reasonable interpretation. Nor are we persuaded
Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

6

that we misapprehended or overlooked Patent Owner’s above-noted yarn-
based argument in reaching that decision.

REQUESTER’S REHEARING REQUEST
Provisional Application Support
In a separate rehearing request, Requester contends that we erred by
holding that the ’701 Patent’s provisional application supports (1) claim 1’s
step of “converting a catalyst precursor into catalytic particles,” and (2) the
generic term “catalytic particles.” TPR Req. Reh’g 1–4 (citing Dec. 9–10).
Regarding contention (1), Requester argues the provisional
application’s disclosure of precipitating or forming catalytic particles in situ
is not the conversion step referred to in the ’701 Patent. TPR Req. Reh’g 2.
According to Requester, Dr. Thostenson associates a reduction step with
forming a metal catalyst—not the infusion process in the provisional
application we cited as supporting the recited conversion step. Id.
Requester adds that skilled artisans reading the provisional application
would purportedly not know with certainty (1) what the term “catalyst
precursor” means; (2) what compounds are intended to fall within its scope;
(3) how to form a gas or liquid solution; or (4) how to convert the precursor
to a catalyst particle. Id. 3.
But as Patent Owner indicates, to establish priority, the provisional
application need not spell out every detail of the invention, but rather only
disclosure sufficient to convince ordinarily skilled artisans that the inventor
possessed the invention, and to enable such a person to make and use the
invention without undue experimentation. PO Comments 2–3 (citing
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345
Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

7

(Fed. Cir. 2005)). That is the case here. Moreover, converting catalytic
precursors to catalytic particles was already known in the art as evidenced
by Dr. Thostenson’s declarations as Patent Owner indicates. PO Comments
2.
Nor are we persuaded that we erred in finding that the ’701 Patent’s
provisional application supports the catalytic particles recited in claims 1
and 5. As we noted in our decision, there are only two species at issue that
fall within the genus of catalytic particles, namely metal and non-metal
catalytic particles. Dec. 9. We further noted that, under Bilstad v.
Wakalopulos, 386 F.3d 1116, 1124 (Fed. Cir. 2004), the provisional
application’s disclosing a metallic catalytic particle species was sufficient
written description for a later claimed catalytic particle genus including that
species where, as here, the record lacks persuasive evidence supporting an
exception to this holding. Dec. 9–10. Accord PO Comments 3 (noting this
point). Requester’s arguments to the contrary (TPR Req. Reh’g 3–4) are
unavailing in this regard.

Thostenson Does Not Anticipate Claims 2–4
Lastly, we are not persuaded that we erred in reversing the Examiner’s
decision to reject claims 2–4 as anticipated by Thostenson. Dec. 18.
Although we acknowledged in our decision that Thostenson’s carbon
nanotubes are fused to the preform surface, they are not dispersed
throughout the preform as claimed. Id.
Requester, however, argues that we allegedly did not appreciate that
depositing catalysts on the surface of fiber yarns results in preforms having
fibers dispersed throughout. TPR Req. Reh’g 5. Requester reasons that
Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

8

because the most common intended use of Thostenson’s modified yarn is to
produce a woven preform, when so woven, Thostenson’s vapor grown fibers
are “inevitably” dispersed throughout the preform. Id. 5–6.
But as Patent Owner indicates, Requester cites no persuasive
evidentiary support for these assertions apart from attorney argument which
has little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997). And even assuming, without deciding, that the most common
intended use of Thostenson’s preform is to weave it into a broad good as
Requester asserts, that does not mean that it is necessarily so woven—a
crucial requirement for inherent anticipation as Patent Owner indicates.
PO Comments 3–4. Requester’s reliance on KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007) in this regard (TPR Req. Reh’g 5) is inapposite where,
as here, the Examiner’s rejection is based on anticipation—not obviousness.
We are, therefore, not persuaded that we misapprehended or
overlooked those points in reaching our decision to reverse the Examiner’s
anticipation rejection of claims 2–4 over Thostenson.

CONCLUSION
For the foregoing reasons, we have granted Requester’s and Patent
Owner’s requests to the extent that we have reconsidered our decision, but
we deny the request with respect to making any changes therein.

Appeal 2015-007690
Reexamination Control No. 95/001,936
Patent US 7,927,701 B2

9

Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

DENIED

Patent Owner:

Endurance Law Group PLC
180 W. Michigan Ave.
Suite 501
Jackson, MI 49201

Third Party Requester:

Thompson Hine LLP Intellectual Property Group
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934