Ex Parte Bening et al

Board of Patent Appeals and Interferences

Nov 30, 2007

11212441 (B.P.A.I. Nov. 30, 2007)

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
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Decided: November 30, 2007
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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
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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
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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
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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.
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Application 11/212,441
The Primary Examiner’s decision is reversed.
REVERSED

tf/ls

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