Ex Parte Elhard et al

Patent Trial and Appeal Board

Jan 18, 2018

12682777 (P.T.A.B. Jan. 18, 2018)

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.
12/682,777 07/12/2010 Joel D. Elhard 22154(9)US 5598
34833 7590
FRANK ROSENBERG
5737 Kanan Road, No. 190
Agoura Hills, CA 91301
EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL D. ELHARD, AMY M. HEINTZ, and STEVEN M. RISSER
Appeal 2016-000469
Application 12/682,7771
Technology Center 1700
Before MARKNAGUMO, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
maintained rejection under 35 U.S.C. § 103(a) of claims 1, 2, 5, 7, 8, and
21-23 over Tamawskyj,2 of claims 3-6, 18-21, and 23 over Tamawskyj in
view of Gruner,3 and of claims 24-28 over Tamawskyj in view of Gmner
and Ge.4 We have jurisdiction under 35 U.S.C. § 6. We reverse.
1 Appellants identify Battelle Memorial Institute as the real party in interest.
Appeal Br. 2.
2 Tamawskyj et al., US 2006/0269864 Al, published November 30, 2006.
3 Gmner, US 2007/0153362 Al, published July 5, 2007.
4 Ge et al., US 2007/0246689 Al, published October 25, 2007.
Appeal 2016-000469
Application 12/682,777
THE INVENTION
The subject matter of the claims on appeal relates to the method of
coating carbon nanotubes (CNTs) with polymeric coating formulations that
include dopants or dopant moieties, and CNT composite products.
Specification filed April 12, 2010 (“Spec.”), Abstract.
Independent claims 1 and 4 are representative.
1. A method of coating a CNT film, comprising:
providing a CNT layer;
providing a polymeric coating in direct contact with the
CNT layer, wherein the polymeric coating comprises a dopant
or dopant moiety having a HOMO energy of -7.0 eV or lower
onto the CNT layer.
4. A CNT containing composite, comprising:
a CNT layer;
a polymeric coating in direct contact with the layer of
CNTs; and
wherein the polymeric coating comprises a dopant or
dopant moiety having a HOMO energy of -7.0 eV or lower;
wherein, in the layer of CNTs, at least 80% (by mass) of
the CNTs have a closest contact with another CNT of 0.5 nm or
less.
Appeal Br. (Claims App’x) i-ii.
DISCUSSION5
We are persuaded that the Examiner has failed to meet the Office’s
burden of establishing the unpatentability of the claims. For any ground of
5 In our discussion, we refer to the Specification, the Final Office Action
issued June 27, 2014 (“Final Act.”), as modified by the Advisory Action
issued November 19, 2014 (“Advisory Act.”), the Appeal Brief filed March
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Application 12/682,777
rejection, “the [Ejxaminer bears the initial burden ... of presenting a prima
facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). We add the following.
Rejection of claims 1, 2, 5, 7, 8, and 21—23 over Tarnawskyj
Claim 1 requires, inter alia, that the provided “polymeric coating
comprises a dopant or dopant moiety having a HOMO energy of -7.0 eV or
lower.” The Examiner relies on Tamawskyj’s disclosure of an exemplary
“conductive polymer, ... a conductive polyaniline [doped] with an organic
acid, such as a sulfonic acid” 48) as meeting the limitation as to the
dopant, reasoning that it “is considered to encompass the claimed sulfonic
acids of claims 18 and 20” (Ans. 2) and that “there are many sulfonic acids
with the low HOMO levels as claimed” {id. at 9). See also Advisory Act. 2
(“[M]any of the dopant’s [sic] present in the specification appear to be
sulfonic acids.”).
Appellants contend that the recited “HOMO energy of -7.0 eV or
lower” is not inherent in Tarnawskyj and the Examiner has failed to provide
a motivation for modification of Tarnawskyj to include a dopant with such a
HOMO energy level. Appeal Br. 5.
On this record, the Examiner has failed to meet the requisite burden to
establish a prima facie case. The Examiner’s reliance of the disclosure,
generically, of “a sulfonic acid” is not sufficient. While many sulfonic acids
may meet the recited HOMO energy limitation, the Examiner does not
maintain that all meet the limitation. Ans. 9. Further, there is no sound
5, 2015 (“Appeal Br.”), the Examiner’s Answer issued August 11, 2015
(“Ans.”), and the Reply Brief filed October 12, 2015 (“Reply Br.”).
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Application 12/682,777
basis for the generic disclosure of “a sulfonic acid” to constitute the
disclosure of each sulfonic acid such that it amounts to the disclosure of a
sulfonic acid that meets the limitation as to the HOMO energy level. Cf. In
re Petering, 301 F.2d 676, 681 (CCPA 1962) (finding disclosure of abroad
class of compounds to disclose a more limited class when “one skilled in this
art would, ... at once envisage each member of this limited class.”
(emphasis added)). It follows that the claimed characteristic is not inherent
to every sulfonic acid and the generic disclosure is insufficient as a
disclosure of sulfonic acids that do meet the limitation.
In response to Appellants’ proffered evidence,6 the Examiner further
finds that
[T]he art of record desires to form a conductive film with lower
resistance . . . [and] one of ordinary skill would understand that
the desire to choose a dopant amongst those disclosed by the
prior art... is based on a desire to provide the lowest resistance
or higher conductivity. This is simply optimization.
Ans. 10.
Appellants contend in response that “[i]t was not known that the
HOMO energy was a result effective variable.” Reply Br. 3 (citing
declaration of Joel D. Elhard dated November 7, 2014 (“the Elhard
Declaration”)). We find the Elhard Declaration creditable based on the
credentials, education, and experience of the declarant, as well as the support
and reasoning contained therein. The Elhard Declaration states, inter alia,
that “[conventional thought has been that the energy of the highest occupied
energy level (HOMO)... is not important. . . [and that] [w]e have found,
contrary to conventional thought, that the HOMO ... is an excellent
6 The declaration of Amy M. Heintz, dated November 6, 2014.
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selection criteria for developing devices with high performing figures of
merit.” Elhard Declaration 8. Rather, “it was conventionally believed that
the LUMO energy level of the dopant had to be controlled for effective
doping . . . [and] that the lower the LUMO energy (more negative) the
better.” Elhard Declaration 7.
In light of the proffered evidence contrary to the HOMO energy being
a known result effective variable, the Examiner’s articulated reasoning is
insufficient to establish a prima facie case grounded on optimization of a
result effective variable. See, e.g., In re Antonie, 559 F.2d 618, 620 (CCPA
1977) (“This case, in which the parameter optimized was not recognized to
be a result-effective variable, is another exception” to “the rule that the
discovery of an optimum value of a variable in a known process is normally
obvious.”). The Examiner, likewise, has failed to establish a correlation
between the basis for increased conductivity provided through a conductive
polymer by a dopant, as disclosed in Tamawskyj, and the basis for increased
conductivity provided by coating a CNT with a polymer including a dopant
according to the invention. Absent such, there is no sound basis for
concluding that the addition of dopant to provide a conductive, dopant-
containing polymer would lead to a polymer with a dopant “having a
HOMO energy of -7 .0 eV or lower” as required by the claims.
On this record, accordingly, the Examiner’s articulated reasoning falls
short of that necessary for a prima facie case of obviousness. See In re
Warner, 379 F.2d 1011,1017 (CCPA 1967) (“The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not. . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).
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For these reasons, we do not sustain the rejection of claim 1 and of
claims 2, 5, 7, 8, and 21-23 depending, directly or indirectly, on claim 1, in
view of Tamawskyj alone.
Rejection of claims 3—6, 18—20, 21, and 23 over Tarnawskyj and
Gruner
Claim 4 is representative of the claims directed to CNT-containing
composites. Claim 4 requires, inter alia, “a CNT layer” and a “polymeric
coating in direct contact with the layer of CNTs . . . comprising] a dopant or
dopant moiety having a HOMO energy of -7.0 eV or lower.” The Examiner
relies on Gruner as disclosing a product “substantially identical to that
formed in the instant claimed invention” in its disclosure of a process that
“comprises deposition of a nanotube layer, a dopant, and covering with a
conforming polymer layer.” Ans. 4. The Examiner reasons that “to the
extent required by the claims, it would be obvious to provide the same
material by combining or changing the order of deposition of one or more of
the material.” Ans. 4 (emphasis added). The Examiner maintains that “the
method of production (product by process limitations) are [sic] not
indicative of patentability wherein the article is otherwise taught.” Ans. 4;
see also Ans. 9 (“Appellant has not established that the product requires
there [sic] argued process.”).
Appellants contend that Gruner’s process of adding dopant directly
onto CNTs with subsequent coating with a polymer layer results in a
different product than that claimed. Appeal Br. 7-8; Reply Br. 2.
We find the Examiner’s reasoning grounded on the determination that
the product obtained by adding dopant directly onto CNTs with subsequent
coating with a polymer layer appears to be the same or similar to that
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obtained when the dopant is mixed into the polymer to form a doped
polymer which is then applied to the CNT layer. On this record, we find no
sound basis for maintaining that Graner’s process provides the structure
claimed. Accordingly, the Examiner’s articulated reasoning falls short of
that necessary for a prima facie case. See Warner, 379 F.2d at 1017.
For these reasons, we do not sustain the rejection of representative
claim 4, or of claims 3, 4, 5, 18-20, 21, and 23.
Rejection of claims 24—28 over Tarnawskyj, Gruner, and Ge
Claim 24 depends ultimately from claim 1. Claims 25-28 depend,
directly or indirectly, from claim 4.
The Examiner relies on Ge for its teaching of “an optically transparent
conductive polymer having (sulfates) sulfonic groups attached and carbon
nanotubes.” Ans. 7-8 (citing Ge 3—4, 20, 49, 61-64). The Examiner’s
reliance on Ge and further articulated reasoning, however, does not remedy
the deficiencies in the rejections discussed above. For example, as to claims
24 and 25, the Examiner relies on sulfonic acid groups grafted onto the
polymer for the further limitation that “the dopant is grafted to a polymer
and the polymer coating comprises the dopant-grafted polymer,” but wholly
fails to set forth any basis for these having a HOMO energy level of -7.0 eV
or lower. Ans. 7. Thus, the rejections are still improperly grounded on
speculation or unfounded assumptions.
By virtue of their dependency from claims argued above, Appellants
contend claims 24-28 are patentable. Appeal Br. 10.
For these reasons, and those above, we do not sustain the rejection of
claims 24-28.
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We decline to scour the record in the first instance for facts that might
support a prior art rejection of the claim on appeal, as our primary role is
review, not examination de novo.
DECISION
The Examiner’s decision rejecting claims 1-8 and 18-28 is
REVERSED.
REVERSED
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