Ex Parte Chiou et al

Patent Trial and Appeal Board

Jun 16, 2016

12995042 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121995,042 06/19/2011
8698 7590 06/20/2016
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
FIRST NAMED INVENTOR
Nan-Rong Chiou
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
OSU1159-265B 7526
EXAMINER
BOYLE, KARA BRADY
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
s tandleydocketing@standley llp .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteNAN-RONG CHIOU, LY JAMES LEE, JINTAO YANG, and
SHU-KAI YEH
Appeal2014-007292
Application 12/995,042
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and WLIA HEANEY,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner finally rejecting claims 1-5, 9-13, and 15-20 of
Application 12/995,042. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the real parties in interest as The Ohio State University
Research Foundation and Nanomaterial Innovation Ltd. Br. 2.
Appeal2014-007292
Application 12/995,042
BACKGROUND
The subject matter on appeal relates to a method for making a foamed
polymer from a polymeric material precursor. Br. 29 (Claims Appx). The
foam facilitating material of the polymeric precursor comprises carbon
black, alone or in combination with particulate-like, plate-like and fiber-like
nanoparticles, and is adapted to contain liquid in the absence of surfactant.
Id.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, with the limitations at issue in italics, is illustrative of the claims on
appeal:
1. A method for making a foamed polymer comprising:
a. preparing a foamable polymeric material precursor
compnsmg:
i. a polymeric material selected from the group consisting
of polystyrene, thermoplastic polymers, and polymer
blends thereof;
• • +, • h · 1 . . . 1 h . +-h . +, 11. a _Loaming _Lac1_L1tat1ng mater1a_L _L_Lav1ng a_LJ.Jn1ty _1_0f a
liquid, said foaming facilitating material comprised of
activated carbon alone or in combination with material( s)
selected from the group consisting of charcoal, and I -
dimensional, 2- dimensional, and 3-dimensional
nano/micro-materials, said foaming facilitating material
adapted to contain said liquid in the absence of any
surfactant-like molecules or polymers;
iii. a blowing agent; and
iv. said liquid; and
b. preparing a foamed polymer from said foamable polymeric
material precursor.
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Appeal2014-007292
Application 12/995,042
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Park et al. US 5,288,740
Suh et al. US 5,679,718
Lee et al. US 8,507 ,568 B2
Feb.22, 1994
(hereinafter "Park")
Oct. 21, 1997
(hereinafter "Suh")
Aug. 13, 2013
(hereinafter "Lee '568")
THE REJECTIONS
1. Claims 1-5, 9, 10, 12, 13, and 15-20 are rejected on the ground of
nonstatutory obviousness type double patenting as being
unpatentable over claims 1, 2, 5, 6, 10, 14, and 15 of Lee '568.
2. Claims 1-5, 9-13, and 15-20 are rejected under 35 U.S.C. §
103(a) as unpatentable over the combination of Park and Suh.2
DISCUSSION
Obviousness Type Double Patenting
Appellants have not responded to the nonstatutory obviousness type
double patenting rejection. Br. 9-24. Accordingly, we summarily affirm the
double patenting rejection. See Manual of Patent Examining Procedure§
1205.02 (2005) ("If a ground of rejection stated by the examiner is not
2 The Examiner asserted Park and Suh against the same claims in separate
rejections, although rearranging them so that Park is the primary reference in
one rejection, and Suh is the primary reference in the other rejection. Ans.
3-12. We discuss both rejections together.
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Appeal2014-007292
Application 12/995,042
addressed in the appellant's brief, that ground of rejection will be summarily
sustained by the Board.").
Obviousness
Appellants' arguments focus on limitations in independent claim 1.
Br. 8-14. We address only claim 1, with the dependent claims standing or
falling therewith.
Park discloses a process for producing closed-cell alkenyl aromatic
polymer foams. Park Abstract. The alkenyl aromatic polymer is preferably
polystyrene. Id. at 2: 68-3: 1. A blowing agent, comprising carbon dioxide,
is incorporated into the melt polymer material at elevated pressure to
produce a foamable gel. Id., Abstract. Suh discloses a foam made from
alkenyl aromatic polymers, preferably polystyrene, and comprising an
infrared attenuating agent (IAA), such as activated carbon. Suh 2:20-24,
58---64; 3 :65---66. Neither reference teaches that its foaming material requires
a surfactant-like molecule or polymer. The Examiner determines that it
would have been obvious to incorporate Suh's activated carbon into Park's
foam, "in order to afford a significantly greater proportional reduction in
total foam conductivity relative to a foam without the IAA .... [T]he IAA
induces a greater proportional reduction in total foam thermal conductivity
(which means the foam has better insulating properties) than a foam of
larger average size." Ans. 7 (citing Suh 2:10-20). The Examiner further
determines that it would have been obvious to use Park's blowing agent
composed entirely of carbon dioxide and water in Suh's foam, in order to
avoid using volatile organic compounds in the blowing agent for
environmental benefits, and to achieve lower diffusivity through the alkenyl
aromatic polymer, which assists in subsequent expansion of the foam body.
Ans. 10-11 (citing Park 4:34--39 and Ex. 7).
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Appeal2014-007292
Application 12/995,042
Appellants argue that the Examiner has not made a prima facie case of
obviousness because the references would not have motivated a person of
ordinary skill in the art to use activated carbon in combination with water in
the making of a foamed polymer, and there would have been no reasonable
expectation of success in incorporating activated carbon in Park's process.
Br. 11. Appellants further argue that the references do not disclose how
water would impact the process of Suh, and there would have been no
reasonable expectation of success in making such a modification to Suh. Id.
at 18-19.
Having reviewed Appellants' arguments and considered the evidence,
we find that a preponderance of the evidence supports the determination of
obviousness. Both references teach the same type of polystyrene foamed
polymers, made by essentially the same method (Park Abstract, 2:23-25;
Suh 1: 1--40, 4:29--49), which leads to a reasonable expectation that including
a non-reactive material with known thermal conductivity reduction, i.e.,
activated carbon, would result in better insulating properties. Appellants
provide no evidence in support of their contentions that Suh's activated
carbon will not function in Park's foam, or that Park's water will not
function as a blowing agent in Suh. Moreover, the Declaration of Dr. Ly
James Lee dated October 9, 2013 provides no evidence or data to support
Appellants' contentions, and therefore is not persuasive. Arguments of
counsel cannot take the place of factually supported objective evidence. See
Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more
weight to prior publications than to subsequent conclusory statements by
experts, the Board acted well within [its] discretion."). Nor have Appellants
provided evidence of unexpected results.
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Appeal2014-007292
Application 12/995,042
Further, Appellants' argument that the references would have
provided no motivation to combine because neither Suh nor Park understood
the impact of activated carbon as a water absorbent in the foaming process
(Br. 19-20) is not persuasive. The fact that Appellants recognize another
advantage of activated carbon cannot be the basis for patentability where the
advantage would flow naturally from following the suggestion of the prior
art. Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Regardless of
whether Suh explicitly states that activated carbon has an affinity for liquid,
Suh's activated carbon is the same as described in Appellants' Specification,
and thus inherently will have the same properties, including an affinity for
liquid and ability to facilitate foaming. See Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1076 (Fed. Cir. 2015) ("A reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect." (internal
quotation marks and alterations omitted)); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007) ("The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results."). Appellants' arguments, unsupported by evidence, fail
to show reversible error in the Examiner's rejection.
SUMMARY
We affirm the rejections of claims 1-5, 9-13, and 15-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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