Ex Parte Garcia et al

Patent Trial and Appeal Board

Feb 6, 2017

12618203 (P.T.A.B. Feb. 6, 2017)

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.
12/618,203 11/13/2009 Enrique J. Garcia M0925.70275US00 6128
23628 7590 02/08/2017
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
THOMPSON, CAMIE S
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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):
Patents_eOfficeAction@WolfGreenfield.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ENRIQUE J. GARCIA, ANASTASIOS JOHN HART,
DIEGO S. SAITO, BRIAN L. WARDLE, and HULYA CEBECI
Appeal 2016-000122
Application 12/618,203
Technology Center 1700
Before LINDA M. GAUDETTE, JULIA HEANEY, and
AVELYN M. ROSS, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 44, 55, 56, 63, 65, and 109—135 of
Application 12/618,203.2 We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
1 Appellants identify the real party in interest as Massachusetts Institute of
Technology. App. Br. 5.
2 App. Br. 9; Final Office Action dated July 29, 2014 (“Final Act.”) 2-4;
Examiner’s Answer dated July 22, 2015 (“Ans.”) 2-4.
Appeal 2016-000122
Application 12/618,203
BACKGROUND
The subject matter on appeal relates to composite materials
comprising a high density arrangement of aligned, elongated nanostructures.
App. Br. 6. Representative claim 44, the sole independent claim on appeal,
is reproduced from the Claims Appendix of the Appeal Brief as follows:
44. An article comprising a plurality of elongated
nanostructures wherein:
the long axes of the elongated nanostructures are substantially
aligned relative to each other;
each elongated nanostructure is positioned relative to an
adjacent elongated nanostructure at a distance so as to together
define an average distance between adjacent elongated
nanostructures;
the plurality of elongated nanostructures extends a distance at
least 10 times greater than the average distance between adjacent
elongated nanostructures in each of two orthogonal directions each
perpendicular to the long axes; and
the volume fraction of the elongated nanostructures within the
article is at least about 5%.
THE REJECTION3
Claims 44, 55, 56, 63, 65, and 109—135 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chopra.4
3 The Examiner withdrew a provisional rejection of claims 44, 55, 56, 63,
65, and 109—135 on grounds of non-statutory obviousness-type double
patenting over claims 1, 25—30, 42, 46, and 49 of co-pending application
12/630,289. Ans. 5.
4 Chopra et al., US 2005/0116336 Al, published June 2, 2005 (“Chopra”).
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Appeal 2016-000122
Application 12/618,203
DISCUSSION
The Examiner finds that Chopra discloses a nanocomposite
comprising nanotubes within a matrix, wherein “a significant portion (e.g.,
40% or more) of the nanotubes are aligned to each other with a mean
angular deviation of 30- or less.” Ans. 2—3, citing Chopra Fig. 2, | 66. The
Examiner further finds that Chopra discloses “the concentration of the
nanotubes ranges from about 1% to 50% by volume.” Ans. 4, citing Chopra
1 52. The Examiner acknowledges that Chopra does not disclose a plurality
of nanostructures extending a distance at least 10 times greater than the
average distance between adjacent nanostructures, but determines that it
would have been obvious to a person of ordinary skill in the art “to have the
nanotubes of the Chopra reference extend a distance at least 10 times greater
than the average distance between adjacent nanostructures” because the
distance between Chopra’s adjacent nanotubes is negligible and the
nanotubes have a length of several hundred microns and an aspect ratio
exceeding 1000. Ans. 4, citing Chopra H 53, 73.
Appellants argue that Chopra does not disclose that the volume
fraction of elongated nanostructures within the article is at least 5%. App.
Br. 13. Appellants dispute the Examiner’s finding that Chopra | 52
discloses “the concentration of the nanotubes ranges from about 1% to 50%
by volume” (Ans. 4) because Chopra 1 52 “recites that the concentration of
the nanostructures ranges from about 1% to 75% by weight or from 1% to
50% by volume . . . [and] also notes that the nanocomposite materials may
incorporate one or more different kinds of nanostructures.” App. Br. 13
(emphasis original). Appellants further note that Chopra 1 51 defines
“nanostructure” as a structure that would include many types of non-
elongated nanostructures, such as nanoparticles. Id. Appellants submit the
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Appeal 2016-000122
Application 12/618,203
Declaration of co-inventor Dr. Anastasios John Hart dated February 19,
2013 (“Hart Declaration”) as evidence that a person of ordinary skill in the
art would likely have understood that the high volume fractions recited in
Chopra 1 52 would be achieved by packing non-elongated nanostructures,
such as nanoparticles, in the interstices between elongated nanostructures;
Appellants further rely on the Hart Declaration as evidence that a person of
ordinary skill in the art using the catalytic growth methods described in
Chopra would not have been capable of growing elongated nanostructures
having a volume density of at least about 5% and having long axes
substantially aligned relative to each other. App. Br. 13—14, citing Hart
Declaration 17.
Appellants’ argument is persuasive of reversible error. The
Examiner’s findings as to what Chopra 1 52 would have taught a person of
ordinary skill in the art (Ans. 4) do not provide the requisite factual basis for
obviousness because Chopra merely teaches a 1%—50% volume fraction of
nanostructures, but not “elongated nanostructures” as recited in claim 44.
Moreover, in response to the Hart Declaration submitted by Appellants to
show that Chopra’s catalytic growth method would not have resulted in an
article having a volume fraction of the elongated nanostructures within the
claimed range, the Examiner does not address the evidence but responds that
“[t]he disclosure does not preclude Chopra from growing nanotubes on more
than one substrate to achieve a volume concentration of nanotubes ranging
from 1% to 50% as disclosed in paragraph 0052 of Chopra to be combined
with a base material.” Ans. 9. The Examiner’s position that Chopra “does
not preclude” a method that would have led to the claimed invention does
not support the rejection because it fails to address what Chopra actually
would have disclosed or taught to a person of ordinary skill in the art.
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Appeal 2016-000122
Application 12/618,203
Further, the Examiner’s reliance on Chopra 174 (Ans. 7) does not
support the rejection because the embodiment taught in Chopra 174 and Fig.
4B, having “nanotube clusters 412” with spaces between the clusters
“wholly or partially filled by nanotubes 414 with a different (in this
example, horizontal) orientation,” is not encompassed by claim 44, which
requires that the same elongated nanostructures that have long axes
substantially aligned relative to each other must also make up a volume
fraction within the article of at least 5%. Claims Appx; Reply Br. 6—7.
Accordingly, for the reasons discussed above, we conclude that the
Examiner reversibly erred and did not provide the requisite factual basis for
obviousness. We need not separately address Appellants’ additional
arguments for reversal of the rejection, or the appealed claims which depend
from claim 44.
SUMMARY
We reverse the rejection of claims 44, 55, 56, 63, 65, and 109—135 as
unpatentable under 35 U.S.C. § 103(a).
REVERSED
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