Ex Parte Curliss et al

Patent Trial and Appeal Board

Dec 14, 2016

12041504 (P.T.A.B. Dec. 14, 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.
12/041,504 03/03/2008 David B. CURLISS P2SI-P0003 1503
103460 7590 12/16/2016
Endurance Law Group, PLC
180 West Michigan Avenue
Suite 801
JACKSON, MI 49201
EXAMINER
BARCENA, CARLOS
ART UNIT PAPER NUMBER
1724
NOTIFICATION DATE DELIVERY MODE
12/16/2016 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):
eofficeaction @ appcoll.com
Docketing @ endurancelaw .com
j shack @ endurancelaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID B. CURLISS and JASON E. LINCOLN
Appeal 2015-006519
Application 12/041,504
Technology Center 1700
Before CHUNG K. PAK, AVELYN M. ROSS, and JENNIFER R. GUPTA,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 43, 44, 51—53, and 58. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In this decision, we refer to the Final Office Action mailed May 19, 2014
(“Final Act.”), the Advisory Action mailed January 30, 2015 (“Adv. Act.”),
the Appeal Brief filed January 20, 2015 (“App. Br.”), the Examiner’s
Answer mailed April 23, 2015 (“Ans.”), and the Reply Brief filed June 23,
2015 (“Reply Br.”).
2 Appellants identify the real party in interest as Performance Polymer
Solutions, Inc., a wholly owned subsidiary of Proof Research, Inc. App.
Br. 1.
Appeal 2015-006519
Application 12/041,504
The subject matter on appeal relates to a continuous process for the
production of continuous fiber preforms useful for making carbon nanotube
reinforced composite articles. Spec. 12. Claims 43 and 52, reproduced
below, are illustrative of the claims on appeal (emphasis added to certain key
recitations pertinent to deciding this appeal).
43. A carbon nanotube reinforced continuous fiber preform
produced by the process of:
(a) dispensing a continuous fiber preform from a spool;
(b) dispersing a solution of catalyst precursor throughout
the continuous fiber preform;
(c) converting the catalyst precursor into catalytic
particles, the catalytic particles dispersed throughout the
continuous fiber preform;
(d) continually moving the continuous fiber preform
through a growth furnace;
(e) contacting the continuous fiber preform containing the
catalytic particles with a hydrocarbon precursor gas; and
(f) growing vapor grown carbon nanotubes (VGCNT) in
situ from the catalytic particles dispersed throughout the
preform, without vaporization of the preform;
wherein the carbon nanotube reinforced preform is
spoolable and comprises a plurality of continuous fiber
filaments, the filaments being quartz, glass, ceramic, metal,
carbon or combinations thereof, and wherein the VGCNT is
infused within and among the continuous fiber filaments to yield
a carbon nanotube reinforced continuous fiber preform.
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Application 12/041,504
52. A continuous carbon nanotube reinforced continuous fiber
preform useful in the manufacture of carbon nanotube reinforced
composite articles, comprising:
(a) a spoolable continuous fiber preform comprising a plurality
of continuous fiber filaments, wherein no portion of said preform has
undergone vaporization; and
(b) vapor grown carbon nanotubes (VGCNT) dispersed
throughout said continuous fiber preform, the VGCNT infused within
and among the continuous fiber filaments.
App. Br. 16 and 17 (Claims Appendix).
REJECTIONS ON APPEAL3
1. Claim 53 stands rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly
claim the invention;
2. Claims 43, 51—53, and 58 stand rejected under 35 U.S.C. § 102(b)
as anticipated by, or alternatively, under 35 U.S.C. § 103(a) as
unpatentable over Thostenson et al., Carbon nanotube/carbon fiber
hybrid multiscale composites, 91 J. of Applied Physics 6034—
6037 (2002). (hereinafter “Thostenson”);
3. Claims 43, 52, and 58 stand rejected under 35 U.S.C. § 102(b), or,
alternatively, under 35 U.S.C. § 103(a) as unpatentable over Lim et
al., Growth of Carbon Nanotubes on Surface of Carbon Fibers
3 The rejection of claim 57 under 35 U.S.C. § 112, first paragraph, on
page 3 of the Final Office Action was withdrawn in the Advisory Action
mailed January 30, 2015 (Adv. Act. 2), and thus is not before us for
consideration. The objection to Appellants’ Abstract was also withdrawn by
the Examiner. See Adv. Act. 2.
3
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Application 12/041,504
Rod, 317-318, Key Eng’g Materials 259-262 (2006)
(hereinafter “Lim”);
4. Claim 44 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Lim or Thostenson; and
5. Claims 51 and 53 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lim in view of Thostenson.
DISCUSSION
Indefiniteness Rejection
The Examiner rejects claim 53 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the invention. Claim 53 is directed to a carbon reinforced composite
article comprising “an essentially endless VGCNT reinforced continuous
fiber preform infused with a thermoplastic or thermoset polymer,
thermoplastic or thermoset polymer resin, metal, ceramic, ceramic precursor,
or amorphous glass to provide a carbon nanotube reinforced composite
article.” The Examiner’s rejection is based on the language “essentially
endless” in claim 53.
Appellants point to paragraphs 20 and 56 of their Specification as
providing a definition for the phrase “essentially endless.” Paragraph 20 of
Appellants’ Specification states that “the preforms thus made are essentially
endless, not being limited in their capacity to be formed into composites by
length or size.” Paragraph 56 of their Specification defines “endless” as “the
ability to bond, braid, weave or combine in any like manner multiple
continuous carbon fiber yams sequentially, in parallel or any other manner
such that the length or area is essentially infinite or endless” (emphasis
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Application 12/041,504
added). Neither paragraph identified by Appellants, however, clearly
defines what is covered by the phrase “essentially endless” as in claim 53.
Thus, Appellants’ Specification does not provide clear guidance or a
definition from which a person of ordinary skilled in the art would be able to
determine what reasonably constitutes the “essentially endless” vapor grown
carbon nanotubes (VGCNT) reinforced continuous fiber preform recited in
claim 53. Accordingly, we sustain the Examiner’s indefmiteness rejection.
Rejections over Thostenson orLim, alone or in combination
In view of our determination above that claim 53 is indefinite, we
procedurally reverse the prior art rejections of claim 53 because we cannot
assess the merits of such prior art rejections without understanding the
meaning or scope of the phrase “essentially endless.” See In re Steele, 305
F.2d 859, 862—63 (CCPA 1962) (“Our analysis of the claims indicates that
considerable speculation as to meaning of the terms employed and
assumptions as to the scope of such claims were made by the examiner and
the board. We do not think a rejection under 35 U.S.C. § 103 should be
based on such speculations and assumptions.”); In re Wilson, 424 F.2d 1382,
1385 (CCPA 1970) (“If no reasonably definite meaning can be ascribed to
certain terms in the claim, the subject matter does not become obvious- the
claim becomes indefinite.”). It should be understood, however, that our
decision in this regard is pro forma and based solely on the indefmiteness of
the claimed subject matter, and does not reflect on the adequacy of the prior
art evidence applied in support of the rejections.
Independent claim 43 is directed to a continuous carbon nanotube
reinforced continuous fiber preform produced by, inter alia,
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Application 12/041,504
dispersing a solution of catalyst precursor throughout the
continuous fiber preform . . . [and] growing vapor grown
carbon nanotubes (VGCNT) in situ from the catalytic particles
dispersed throughout the preform . . . wherein the VGCNT [are]
infused within and among the continuous fiber filaments to
yield a carbon nanotube reinforced continuous fiber preform.
Independent claim 51 is directed to a carbon nanotube reinforced composite
article produced by a process that includes similar “dispersing” and
“growing” steps as in claim 43, resulting in the VGCNT being “infused in
the preform to yield a VGCNT reinforced continuous fiber preform.”
Claim 51.
We note that claims 43 and 51 are product-by-process claims.
“[E]ven though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself.” In re
Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). “If the product in a product-by­
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process.” Thorpe, 111 F.2d at 697.
Independent claim 52 is not a product-by-process claim and is
directed to a continuous carbon nanotube reinforced continuous fiber
preform comprising, inter alia, VGCNT dispersed throughout said
continuous preform. As in claim 43, claim 52 recites that the VGCNT are
“infused within and among the continuous fiber filaments.”
The Examiner interprets the claim term “throughout” as “not meaning
interior but throughout the surface,” and the claim term “infused” as
meaning “growth from the surface.” Ans. 3. Based on this construction, the
Examiner finds that the carbon nanotube/carbon fiber composites disclosed
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in Thostenson and Lim, which are synthesized by growing carbon nanotubes
on the surfaces of carbon fibers, are “structurally the same” as Appellants’
claimed carbon nanotube reinforced continuous fiber preform. Ans. 3 and 6.
Appellants contend, inter alia, that the Examiner’s rejection should be
reversed because the Examiner’s construction of the terms “infused” and
“throughout” is inconsistent with Appellants’ Specification. See Reply
Br. 3. Appellants further contend that Thostenson’s and Lim’s carbon fibers
are not infused with VGCNTs because in both Thostenson and Lim, the
catalyst for growing the carbon nanotubes is applied to the surface of
Thostenson’s carbon fibers bundles and Lim’s carbon fiber rods, not
dispersed throughout the carbon fibers, and thus the VGCNTs could not be
infused in Thostenson’s or Lim’s carbon fiber filaments or preform as in
claims 43, 51, and 52. See Reply Br. 2—3; see also App. Br. 7 and 9-10.
We are persuaded by Appellants’ argument that the Examiner’s
rejections over Thostenson and/or Lim are based on an unreasonable claim
construction. See, e.g., In re Suitco Surface, Inc., 603 L.3d 1255, 1259—60
(Led. Cir. 2010) (The PTO’s “construction [must] be ‘consistent with the
specification, . . . and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art’”
(iquoting In re Bond 910 L.2d 831, 833 (Led. Cir. 1990))). When the claim
language is read in light of the Specification as a whole, we conclude that
the term “throughout” would have been understood by one of skill in the
relevant art to mean the solution of catalyst precursor is dispersed on, as well
as penetrated within the interior of, the continuous preform. As a result,
following growth, the carbon nanotubes in the claimed preform are “infused
within” (at least partially inside the continuous fiber filaments or preform),
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Application 12/041,504
and not merely deposited on the exterior surface of, the continuous fiber
filaments or preform. See Spec. 1100 (describing how “[t]he vapor grown
carbon fibers grow from the catalyst particles within the woven or braided
composite preform resulting in a tangled mass of vapor grown carbon fibers
infiltrated in the continuous fiber preform.”); see also Spec. ]Hf 13, 100, 164—
166; Figs. 1A, 2. Based on this construction, we determine that the
Examiner, on this record, has not shown that Thostenson and Lim teach or
would have suggested Appellants’ claimed carbon nanotube reinforced
continuous fiber preform (independent claims 43 and 52), and carbon
nanotube reinforced composite article (independent claim 51). See Spec. 1
18 (describing how in Thostenson the catalyst is applied to the carbon fiber
via magnetron sputtering which only deposits catalyst on the outermost
surface of the fiber bundle); see also Lim 260 (describing that carbon
nanotubes are synthesized on catalytic chemical vapor deposition (CCVD))
(emphasis added), and Final Act. 4—6 (where the Examiner finds that
Thostenson discloses depositing catalyst on, not dispersing the catalyst
throughout, a carbon fiber (Final Act. 4) and finds that both Thostenson and
Lim disclose growing carbon nanotubes on the surface of the carbon fiber
{id. at 5 and 6)) (emphasis added).
For these reasons, we cannot sustain the Examiner’s obviousness
rejections of claims 43, 44, 51, 52, and 58.
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DECISION
Rejection I is affirmed, and Rejections II—V are reversed.
Accordingly, the Examiner’s decision to reject claims 43, 44, 51—53, and 58
is affirmed-in-part.
AFFIRMED-IN-PART
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