Ex Parte Dai et al

Board of Patent Appeals and Interferences

Jul 28, 2010

11088055 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LIMING DAI, WEI CHEN, and RENHE LIN
____________

Appeal 2009-011083
Application 11/088,055
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, BRADLEY R. GARRIS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011083
Application 11/088,055

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 3-6, 8-13, and 29-32. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A transparent conductive coating comprising:

a resin;

polyanaline; and

a plurality of nanotubes, wherein the coating has a
surface sheet resistance not greater than about 1010 ohms/square
at -40° F.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smalley 2004/0186220 A1 Sep. 23, 2004
Blanchet-Fincher 2005/0165155 A1 Jul. 28, 2005
Aikawa JP 2004256702 A Sep. 16, 2004
(as translated)

THE REJECTION(S)

1. Claims 1, 4-6, 8 and 29-32 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Blanchet-Fincher.
2. Claims 1, 4-6, 8, and 29-32 are rejected under 35 U.S.C. §102(e) as
being anticipated by Aikawa.
Appeal 2009-011083
Application 11/088,055

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3. Claims 11 and 12 are rejected under 35 U.S.C. §103(a) as being
obvious over Blanchet-Fincher.
4. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
obvious over Blanchet-Fincher in view of Smalley.
5. Claims 3, 11, 12 and 13 are rejected under 35 U.S.C. §103(a) as being
obvious over Aikawa.
ISSUE(S)
Did the Examiner err in determining that each of Blanchet-Fincher
and Aikawa necessarily has a surface sheet resistance within the claimed
range?
We answer this question in the negative.

ANALYSIS
(with Findings of Fact and Principles of Law)

We essentially adopt the Examiner’s findings pertinent to the issue
raised by Appellants for this rejection. We therefore incorporate the
Examiner’s position as set forth in the Answer2. We add the following for
emphasis only.
We focus on the references of Blanchet-Fincher and Aikawa solely
because these are the references involved with the issue raised by
Appellants. Therefore, our analysis made with respect to these references
determines the outcome of each rejection in this appeal.

2 Answer mailed on January 27, 2009.
Appeal 2009-011083
Application 11/088,055

4
Appellants refer to the “Lin Declaration” (attached in the Evidence
Appendix). Appellants argue that this Declaration establishes that coatings
of similar or identical composition can have different physical properties,
such as surface sheet resistance. Appellants conclude that therefore each of
Blanchet-Fincher and Aikawa do not necessarily have a surface sheet
resistance within the claimed range. Br. 3-6.
Upon our review of this Declaration, we find that the statements made
regarding factors such as dispersion3 (which supposedly affects surface
resistivity) are unsupported testimonial. That is, no probative evidence is set
forth in the Declaration, such as comparative testing, to support the opinions
expressed therein. Therefore, we are unpersuaded by this Declaration. See
e.g., Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)
(“[T]he Board is entitled to weigh the declarations and conclude that the lack
of factual corroboration warrants discounting the opinions expressed in the
declarations.”) (citations omitted); In re Etter, 756 F.2d 852, 849-60 (Fed.

3 Regarding the property of dispersion, Appellants refer to a Vigolo article
in the Reply Brief mailed on November 4, 2008 and in the Supplemental
Reply Brief mailed on March 27, 2009. Appellants assert that this article
demonstrates that homogenous dispersion of nanotubes can only be obtained
by mixing certain additives in certain ranges with the nanotubes. Reply
Brief mailed November 4, 2008, p. 3. However, the Vigolo article is not
listed in the Evidence Appendix of Appellants’ Brief and therefore not
before us for consideration. See 37 CFR § 41.37. Moreover, Appellants do
not address the Examiner’s response on page 13 of the Answer wherein the
Examiner states that “[b]oth Blanchett-Fincher and Aikawa et al. expressly
disclose the incorporation of polyaniline. At least the former expressly
delineates the role of this material as being a dispersant for the carbon
nanotubes hence the requirement for ‘certain additives’ per the teachings of
Vigolo is met.”

Appeal 2009-011083
Application 11/088,055

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Cir. 1985) (en banc) (opinion affidavit asserting the reference disclosed
obsolete technology was correctly characterized by the board “as merely
representing opinions unsupported by facts and thus entitled to little or no
weight.”) (citing In re Piasecki, 745 F.2d 1468, 1472-73 (Fed. Cir. 1984); In
re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976)). We thus agree with the
Examiner’s position on page 12 of the Answer that there is no evidence
supporting that the applied art does not have the claimed surface resistivity.
In other words, Appellants have not met their burden as prescribed, e.g., in
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (where the Examiner has
reason to believe that a claimed property may, in fact, be an inherent
characteristic of the prior art product, an Examiner possesses the authority to
require applicant to prove that the subject matter shown to be in the prior art
does not in fact possess the property.). On the other hand, the Examiner has
met his burden of establishing that the claimed property is inherent based
upon the fact, as admitted by Appellants, that the applied art discloses
coatings of similar or identical composition. When the Examiner puts forth
a finding of inherency, the Examiner must provide enough evidence or
scientific reasoning to establish that the Examiner’s belief that the property
is inherent is a reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464-65
(BPAI 1990); Ex parte Skinner, 2 USPQ2d 1788, 1789 (BPAI 1986).
In view of the above, we affirm each of the rejections.
CONCLUSIONS OF LAW AND DECISION
The Examiner did not err in determining that each of Blanchet-
Fincher and Aikawa necessarily has a surface sheet resistance within the
claimed range, and therefore we affirm each of the rejections.
Appeal 2009-011083
Application 11/088,055

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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)(v).

AFFIRMED

kmm

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