Ex Parte Adler et al

Patent Trial and Appeal Board

Sep 28, 2017

13511646 (P.T.A.B. Sep. 28, 2017)

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.
13/511,646 08/10/2012 Udo Adler TYCDE-0040-01-US-E 1019
27268 7590 10/02/2017
Faegre Baker Daniels LLP
300 NORTH MERIDIAN STREET
SUITE 2700
INDIANAPOLIS, IN 46204
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
inteas @faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UDO ADLER, DIRK RODE, ISABELL BURESCH,
JIAN WANG, DOMINIQUE FRECKMAN, and
HELGE SCHMIDT
Appeal 2016-008197
Application 13/511,646
Technology Center 1700
Before JAMES C. HOUSEL, BRIAN D. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision rejecting claims 1—15 and 18—22. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision refers to the Specification (Spec.) filed August 10, 2012, the
Examiner’s Final Office Action (Final Act.) dated May 18, 2015,
Appellants’ Appeal Brief (Appeal Br.) filed January 15, 2016, the
Examiner’s Answer (Ans.) dated July 1, 2016, and Appellants’ Reply Brief
(Reply Br.) filed August 31, 2016.
2 According to Appellants, the real party in interest is TE Connectivity
Germany Gmbh. Appeal Br. 3.
Appeal 2016-008197
Application 13/511,646
STATEMENT OF THE CASE
The invention relates to a method for applying a coating composition
containing metal particles and carbon in the form of nanotubes, graphenes,
fullerenes, or admixtures thereof, to a substrate. Spec. 11. Appellants
disclose that the addition of carbon to metal coatings could substantially
increase the hardness of the coating on a substrate. Id. 19. However,
Appellants disclose that this benefit comes at the expense of conductivity
when using conventional carbon particles and it is difficult to achieve a
homogenous admixture of carbon with the coating metal. Id. Thus,
Appellants disclose the use of carbon in the form of nanotubes, graphenes,
fullerenes, and admixtures thereof in coating mixtures with metal particles.
Id. 111. In addition, Appellants disclose that after application of the coating
composition to the substrate, thermal processing is preferably carried out at a
temperature of >150°C to 1000°C, preferably 200-950°C, and also that it is
preferable that the coating be homogenized after the application by pressure
and/or temperature. Id. 129
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. Method for applying a coating composition to a substrate
comprising the steps of:
a) producing a coating composition by physical and/or
chemical mixing of carbon in the form of carbon nanotubes,
graphenes, fullerenes or admixtures thereof with metal
particles,
b) planar or selective application of the coating
composition to a metallic substrate; and
c) simultaneously increasing a temperature of the coating
composition to 200° C— 1000° C and mechanically applying a
pressure to the coating composition to increase the
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Application 13/511,646
homogenization thereof.
REJECTIONS
The Examiner maintains the following grounds of rejection:3,4
1. Claims 1, 2, 6—11, 13—15, 18, and 20-22 under 35 U.S.C. §
102(b) as anticipated by, and in the alternative under 35 U.S.C. §
103(a) as unpatentable over, Baars;3 4 5
2. Claims 3—5 and 19 under 35 U.S.C. § 103(a) as unpatentable
over Baars;
3. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Baars
in view of McElrath;6
4. Claims 1—11, 13, 15, and 18—22 under 35 U.S.C. § 103(a) as
unpatentable over Jang7 in view of Baars; and
5. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Jang in
view of Baars, and further in view of McElrath.
Appellants note that the Examiner entered Rejections 4 and 5 in the
Examiner’s Advisory Action of August 19, 2015 in response to Appellants’
after-final amendment cancelling claim 23 and incorporating its limitations
3 The Examiner has withdrawn rejections of claims 20—22 under 35 U.S.C. §
112, second paragraph, of claims 16 and 18 under 35 U.S.C. § 112, fourth
paragraph, of claims 1, 2, 6—11, 13, 15, 16, and 19—22 under 35 U.S.C. §
102(b) as anticipated by Jang, and of claims 3—5 under 35 U.S.C. § 103(a) as
unpatentable over Jang. Ans. 3.
4 Appellants assert that claim 14 was not addressed in the Advisory Action
of August 19, 2015, and is not rejected. Appeal Br. 5. However, as the
Examiner correctly notes (Ans. 3), claim 14 is included in Rejection 1,
which the Examiner indicated would be maintained.
5 Baars et al., US 2004/0076863 Al, published April 22, 2004 (“Baars”).
6 McElrath et al., US 2004/0150312 Al, published August 5, 2004
(“McElrath”).
7 Jang et al., US 2007/0125493 Al, published June 7, 2007 (“Jang”).
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Application 13/511,646
into claim 1. Appeal Br. 4; see also Reply Br. 1—2. As such, the statement
of Rejection 4 necessarily includes the findings the Examiner made with
regard to the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by
Jang (Final Act. 4—6), and the findings, reasoning and conclusion of
obviousness with regard to the rejection of claim 23 under 35 U.S.C. §
103(a) as unpatentable over Jang in view of Baars (Final Act. 11—14).
Fikewise, the statement of Rejection 5 would necessarily include both the
findings, reasoning, and conclusion of obviousness with regard to Rejection
4 and the findings, reasoning, and conclusion of obviousness with regard to
a rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Jang
in view of McElrath (Final Act. 10—11).
Although Appellants accurately acknowledge the status of Rejections
1—5, and request review of these rejections, Appellants merely provide a
response with regard to the rejection under 35 U.S.C. § 103(a) over the
combination of Jang and Baars. Appeal Br. 6—7; Reply Br. 2-4.
Nonetheless, Appellants include arguments within their response that Jang
and Baars, individually, fail to disclose the limitations of claim 1.
Therefore, we will address Appellants’ arguments directed individually
against Baars as applied in Rejection 1, in addition to the combination of
Jang and Baars as applied in Rejection 4.
We note Appellants do not address McElrath, nor do Appellants argue
the merits of Rejections 2, 3, and 5. Moreover, Appellants’ direct their
arguments solely to the limitations of claim 1. Therefore, Rejections 2 and 3
will stand or fall with our decision regarding Rejection 1, and Rejection 5
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Application 13/511,646
will stand or fall with Rejection 4. In addition, dependent claims 2—16 and
18—22 stand or fall with claim 1 pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
Rejection 1: Alternative Anticipation and Obviousness rejections based on
Baars
The Examiner finds Baars teaches a method for applying a coating
composition to a substrate comprising mixing carbon nanotubes with metal
particles to form a coating composition, applying the composition to a
metallic substrate, and simultaneously increasing the temperature of the
coating composition to a temperature of 200—280°C while mechanically
applying pressure to the coating composition to increase homogenization.
Final Act. 7, 9. Alternatively, the Examiner finds that although Baars does
not expressly teach an embodiment comprising mixing carbon nanotubes
with metal particles, such an embodiment would have been obvious with a
reasonable expectation of success when selecting these species from the
Baars listing of possible species to include in a coating composition. Id. at
7—8. The Examiner further determines that differences in temperature will
not patentably distinguish over Baars absent evidence that the recited
temperature range is critical. Ans. 4—5. Moreover, the Examiner finds that
even if the temperature range of 200-280°C does not apply to the
simultaneous heat and pressure step, Baars teaches a temperature range of
about 150°C to about 200°C, which still overlaps and renders obvious the
range recited in claim 1. Ans. 6 (citing In re Wertheim, 541 F.2d 257
(CCPA 1976).
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Appellants argue that Baars fails to disclose simultaneously increasing
a temperature of the coating composition to 200—1000°C and mechanically
applying a pressure to the coating composition to increase the
homogenization thereof. Appeal Br. 6. Appellants contend that Baars
disclosure regarding curing at 200—280°C refers to a heat curing only,
without any simultaneously applied pressure. Id. In addition, Appellants
contend that Baars fails to disclose applying pressure to the coating during
the curing process. Id. Appellants acknowledge that Baars discloses that the
coating may be applied by compression molding, but urges that Baars does
not teach that compression molding occurs at a temperature of 200—1000°C.
Id. Instead, Appellants assert Baars limits the temperature of compression
molding to 200°C. Id.
Appellants’ arguments are persuasive with regard to the anticipation
rejection of claim 1 based on Baars, but are insufficient to identify reversible
error in the Examiner’s obviousness rejection over Baars. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011). As the Examiner finds (Ans. 6), Baars
teaches that the first step of curing can include compression molding while
heating “to a temperature between about 150° C. and about 200° C.” Baars 1
94. As our reviewing court has made clear, when a claim recites
a range, as in this case, that range is anticipated by a prior art
reference if the reference discloses a point within the range.
Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir.
1985). If the prior art discloses its own range, rather than a
specific point, then the prior art is only anticipatory if it describes
the claimed range with sufficient specificity such that a
reasonable fact finder could conclude that there is no reasonable
difference in how the invention operates over the ranges. Atofina
v. Great Lakes Chemical Corp., 441 F.3d 991, 999; ClearValue,
Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir.
2012).
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Ineos USA LLC v. Berry Plastics Corp., 783 F.3d 865, 869 (Fed. Cir. 2015).
Here, there is overlap at Baars’ high endpoint and Appellants’ low
endpoint.8 However, the Examiner does not find that Baars teaches a
specific embodiment or point with the range, nor does the Examiner find that
Baars range describes the claimed range with sufficient specificity such that
a reasonable fact finder could conclude that there is no reasonable difference
in how the invention operates over the ranges.
Moreover, Appellants’ argument that Baars’ disclosure of curing at a
temperature from 200-280°C in paragraph 71 does not include simultaneous
pressure is persuasive. Indeed, in each example where Baars teaches
compression molding the coating after application, the temperature during
such molding is in the range specified in paragraph 94 during compression
molding and then raised to the temperature in paragraph 71 in an oven. See
Baars, Examples 1—20. Accordingly, we cannot sustain the Examiner’s
finding of anticipation of claim 1 by Baars.
However, our reviewing court has held that obviousness typically
exists when, as here, a claimed range overlaps the range disclosed in the
prior art. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A
prima facie case of obviousness typically exists when the ranges of the
claimed composition overlap the ranges disclosed in the prior art.”); In re
8 We note Baars teaches “about 200°C” as the upper endpoint which
implicitly includes at least some overlap between Baars’ range and
Appellants’ range beyond 200°C. Baars 194. However, because we are
persuaded that Baars’ range and Appellants’ range overlap at least at 200°C,
the fact that the overlap may extend a bit further than this endpoint does not
alter our analysis.
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Malagari, 499 F.2d 1297, 1303 (CCPA 1974) (concluding that a claimed
invention was rendered prima facie obvious by a prior art reference whose
disclosed range (0.020-0.035% carbon) overlapped the claimed range
(0.030-0.070% carbon)). In such a case as this, the burden shifted to
Appellants to demonstrate that the prior art taught away from the claimed
invention, there are new and unexpected results relative to the prior art, or
there are other pertinent objective indicia of nonobviousness. See Novo
Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346, 1352—54 (Fed.
Cir. 2013). Appellants do not argue that Baars somehow teaches away from
the claimed invention, nor have Appellants submitted evidence of
unexpected results.
Appellants next argue that Baars fails to disclose simultaneously
increasing a temperature of the coating composition to 200-1000°C and
mechanically applying a pressure to the coating composition to increase the
homogenization thereof. Appeal Br. 7. According to Appellants, the recited
process does not merely cure the coating composition, but it also increases
the homogeneity of the coating composition. Reply Br. 3.
Appellants’ argument fails to identify reversible error in the
Examiner’s obviousness rejection. In this regard, we note the Examiner
finds Baars’ process inherently increases the homogeneity of the coating
composition because Baars teaches the same or similar process, and that the
application of heat and a compressive force would inherently improve
mixing at least to some extent as it would force closer contact of the coating
materials and remove voids in the coating. Final Act. 7; Ans. 6. Appellants
neither dispute nor otherwise address this inherency finding with any
specificity.
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Accordingly, we will sustain the Examiner’s obviousness rejection of
claim 1 based on Baars.
Rejection 4: Obviousness over the combination of Jang and Baars
Having found that claim 1 would have been obvious over Baars alone,
and that Appellants’ have not identified reversible error in that conclusion, it
is not difficult to likewise conclude that Appellants’ have not identified
reversible error in the Examiner’s conclusion that claim 1 would also have
been obvious over the combination of Jang and Baars.
Here, the Examiner finds Jang teaches a method of applying a coating
composition to a substrate comprising mixing carbon nanotubes with metal
particles to form a coating composition, applying the composition to a
metallic substrate, and simultaneously increasing a temperature of the
composition and mechanically applying pressure to the composition to
increase homogenization. Final Act. 5. Although the Examiner
acknowledges that Jang fails to teach the temperature of this treatment, the
Examiner finds Baars teaches a similar method comprising curing of the
coating composition at a temperature from 200-280°C. Id. at 13. Because
the methods and materials of Jang and Baars are similar, the Examiner
concludes that it would have been obvious to have conducted Jang’s
treatment at a temperature of 200-280°C as such a temperature would have
been expected to successfully cure Jang’s coating composition and Jang’s
silence regarding temperature would prompt the ordinary artisan to consult
Baars regarding such curing temperature. Id. at 13—14 (citing In re Aller,
220 F.2d 454, 456 (CCPA 1955)).
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Although Appellants’ argue that the combination of Jang and Baars
fails to teach simultaneous heating and pressure of a coating composition
where the temperature of heating is 200-1000°C, Appellants’ arguments
focus on Baars’ failure to teach use of heating in this temperature range
during compression molding. Appeal Br. 6—7. Appellants also argue for the
first time in the Reply Brief that Jang fails to disclose any increase in
temperature which occurs during the roll-to-roll process or any step of
simultaneously applying heat and pressure to a coating composition on the
substrate. Reply Br. 3.
We note that the Examiner presented the findings regarding Jang no
later than the Final Office Action. Under regulations governing appeals to
the Board, any new argument not timely presented in the Appeal Brief will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI
2010) (informative). See also 37 C.F.R. § 41.37 and § 41.41. Appellants
have provided this record with no such showing. Accordingly, we will not
consider this new argument in the Reply Brief.
Appellants’ remaining arguments as directed to Baars are not
persuasive for the reasons discussed above with regard to Rejection 1.
Accordingly, we will sustain the Examiner’s obviousness rejection of claim
1 over the combination of Jang and Baars.
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CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner’s Answer,
the rejection of claims 1, 2, 6—11, 13—15, 18, and 20—22 under 35
U.S.C. § 102(b) as anticipated by Baars is reversed;
the rejection of claims 1, 2, 6—11, 13—15, 18, and 20—22 under 35
U.S.C. § 103(a) as unpatentable over Baars is affirmed;
the rejection of claims 3—5 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Baars is affirmed;
the rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Baars in view of McElrath is affirmed;
the rejection of claims 1—11, 13, 15, and 18—22 under 35 U.S.C. §
103(a) as unpatentable over Jang in view of Baars is affirmed; and
the rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over Jang in view of Baars, and further in view of McElrath is affirmed.
DECISION
The decision of the Examiner rejecting claims 1—15 and 18—22 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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