Ex Parte Bening et alDownload PDFBoard of Patent Appeals and InterferencesNov 30, 200711212441 (B.P.A.I. Nov. 30, 2007) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte ROBERT C. BENING and THOMAS J. MCCARTHY ______________ Appeal 2008-0326 Application 11/212,441 Technology Center 1700 _______________ Decided: November 30, 2007 _______________ Before CHARLES F. WARREN, PETER F. KRATZ, and JEFFREY T. SMITH, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board from the decision of the Primary Examiner finally rejecting claims 20 through 35 in the Office Action mailed June 21, 2006. Subsequently, Appellants amended claims 26 through 28, 30 through 33, and 35 and canceled claims 20 through 25, 29, and 34. The Examiner refused to allow claims 26 through 28, 30 through 33, and 35 as Appeal 2008-0326 Application 11/212,441 subsequently amended, which are the only claims now before us. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2005). We reverse the decision of the Primary Examiner. Claim 26 illustrates Appellants’ invention of a method for decreasing the length of carbon fibrils, and is representative of the claims on appeal: 26. A method for decreasing the length of carbon fibrils comprising the step of contacting carbon fibrils with an oxidizing solution under reaction conditions sufficient to decrease the length of said carbon fibrils to less than 5 microns, said carbon fibrils having a diameter less than 1 micron and an original length between 7 and 25 microns, and said carbon fibrils having graphic layers substantially parallel to the fibril axis, and being substantially free of a continuous thermal carbon overcoat, wherein the length of the projection of the graphic layers on the fibril axis extends along the axis for a distance of at least two fibril diameters. Appellants request review of the ground of rejection of claims 26 through 28, 30 through 33, and 35 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. App. Br. 4; Ans. 3. The language of independent claim 26 at issue is “carbon fibrils having a diameter less than 1 micron and an original length between 7 and 25 microns.” Similar language is in independent claim 31. The written description in the Specification discloses carbon microfibers, often referred to as “fibrils,” having a diameter of less than 1 micron and “[e]ven more preferred are microfibers having diameters between 3.5 and 75 nanometers.” Spec., e.g., 1:4-7 and 2:8-11. “Examples of such microfibers and methods for preparing them are described in 2 Appeal 2008-0326 Application 11/212,441 Tennent, U.S. Pat. No. 4,663,230 (‘Carbon Fibrils, Method for Producing Same and Compositions containing Same’) . . . assigned to the same assignee as the present application and . . . hereby incorporated by reference.” Spec. 1:7-10 and 17-19. “Preferred microfibers for the oxidation treatment are carbon fibrils having small diameters (preferably between 3.5 and 75 nanometers) . . . as described in Tennent, U.S. Pat. No. 4,663,230.” Spec. 3:26-31. Appellants point to this disclosure in Tennent: In one embodiment, the length of the fibril is greater than about 103 times the diameter of the fibril. In another embodiment, the length of the fibril is greater than about 104 times the fibril diameter. In one embodiment, the fibril diameter is between about 7 and about 25 nanometers. In another embodiment the inner core region has a diameter greater than about 2 nanometers. Tennent col. 5, ll. 1-7; see App. Br. 5; Reply Br. 2. The Examiner contends The indirect support argued (calculating length) is not considered sufficient since the claimed features are not explicitly disclosed. There is no recitation of the length being exactly 1000 times the diameter and this aspect ratio is not a scientifically derived number, and hence cannot be used with precision to characterize the actual product. Instead, it represents an estimate or rough characterization of the general aspect ratio. Therefore, appellant [sic] is not permitted to use it as a bone-fide exact number, especially when it is done in order to distinguish from the prior art, because the nanotubes were never actually . . . characterized in this manner. . . . Appellant [sic] has not in fact narrowed their claims to an existing sub- range; rather, an artificial sub-range has been created . . . . Ans. 3-4. Appellants contend 3 Appeal 2008-0326 Application 11/212,441 Tennent clearly discloses carbon fibrils having a diameter between 7 and 25 nm, and a length to diameter ratio greater than 1000. (Tennent, col. 5, lines 1-6). This ratio corresponds to original carbon fibril lengths of between 7,000 to 25,000 nm, which is 7-25 microns. App. Br. 5; Reply Br. 2. Appellants submit that the “7-25 micron length is part of the original carbon fibril characteristics” which “length, if not explicit, is at least implicitly or inherently disclosed.” Reply Br. 4. The issue is whether the Examiner has carried the burden of establishing a prima facie case of non-compliance with § 112, first paragraph, written description requirement. The examiner has the burden of making out a prima facie case of non-compliance with this statutory provision by setting forth evidence or reasons why, as a matter of fact, the written description in Appellants’ disclosure would not reasonably convey to persons skilled in this art that Appellants were in possession of the invention defined by the claims, including all of the limitations thereof, at the time the Application was filed. See, e.g., In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 262-64 (CCPA 1976). “[T]he invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of § 112” Wertheim, 541 F.2d at 265 (quoting In re Lukach 442 F.2d 967, 969 (CCPA 1971)). “[I]t is up to the PTO to give reasons why a description not in ipsis verbis is insufficient.” Wertheim, 541 F.2d at 262-65. Appellants can amend the originally claimed invention to avoid prior art or for other purposes where there is adequate written description in the Specification establishing that Appellants were in possession of the invention to which they retreat at the time the application 4 Appeal 2008-0326 Application 11/212,441 was filed, even if Appellants thus claim less than that which is disclosed in their Specification. See, e.g., In re Johnson, 558 F.2d 1008, 1017-19 (CCPA 1977); Wertheim, 541 F.2d at 263-64. We agree with Appellants’ analysis. Indeed, the microfiber diameter range described in the passage quoted from Tennent falls within the microfiber diameter range described in the Specification with respect to the microfibers described in Tennent, and the passage quoted from Tennent further describes a range of lengths of the microfibers with respect to the narrower diameter range. The Examiner has not established that Tennent is not part of Appellants’ written description in the Specification or that the invention now claimed is a different invention than that described in the written description in the Specification. See, e.g., Johnson, 558 F.2d at 1017-19 (limited generic claim encompassing polymers to which appellants retreated in view of applied prior art was in fact supported by the written description in the specification which supported broader generic claim encompassing polymers “in the absence of the limitation, and that specification, having described the whole, necessarily described the parts remaining”); Wertheim, 541 F.2d at 264-65 (specification supporting broad process parameter range further in fact described narrower claimed range of that parameter falling within the broad range in view of disclosure of two embodiments falling within narrower range and absence of evidence that the narrower range was a different invention than broad range). Accordingly, the Examiner has not established a prima facie case of non-compliance with the written description requirement, and therefore, we reverse the ground of rejection under 35 U.S.C. § 112, first paragraph. 5 Appeal 2008-0326 Application 11/212,441 The Primary Examiner’s decision is reversed. REVERSED tf/ls KRAMER, LEVIN, NAFTALIS & FRANKEL LLP INTELLECTUAL PROPERTY DEPARTMENT 1177 AVENUE OF THE AMERICAS NEW YORK, NY 10036 6 Copy with citationCopy as parenthetical citation