Ex Parte Hashimoto et al

Patent Trial and Appeal Board

Jan 31, 2019

13377207 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/377,207 12/09/2011 Hiroshi Hashimoto
22850 7590 02/04/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
390732US99PCT 3251
EXAMINER
WORRELL, KEVIN
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROSHI HASHIMOTO,
NAOKI SUGIURA, Y ASUYUKI FUJII,
HIROKO MATSUMURA, TAKAHIROOKUYA,
ISAO OOKI, MASAHIRO HATA,
KOUKI WAKABAYASHI, AKIYOSHI KOGAME,
KAZUNORI SUMIYA, and AKITO HATAYAMA1
Appeal2017-010622
Application 13/377,207
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's
decision finally rejecting claims 15-19 and 22-24 under 35 U.S.C. § 103(a) as
1 The real party in interest is said to be Mitsubishi Rayon Co., Ltd. Appeal Brief
dated January 11, 2017 ("Br."), at 1.
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Application 13/377,207
unpatentable over Venner2 in view of Hong et al. 3 and Manabe et al. 4 Claims 1-
14, 20, 21, 25, and 26 are also pending but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Appellants disclose that "[t]he present invention relates to a carbon fiber
bundle that has excellent mechanical characteristics." Spec. ,r 1; see also Spec. ,r 7.
According to the Appellants' invention, an acrylonitrile precursor fiber bundle is
densified, whereby few voids are formed within the fiber and a high performance
carbon fiber is produced. Spec. ,r 3; see also Spec. ,r,r 25-26.
Independent claim 15 is reproduced below from the Claims Appendix
to the Appeal Brief. The limitation at issue is italicized.
Claim 15. A carbon fiber bundle, wherein a strength of a strand
impregnated with a resin is from 6000 MPa or more; a strand elastic
modulus measured by an ASTM method is from 250 to 380 GPa; a
ratio of the major axis and the minor axis, major axis/minor axis, of a
cross-section of a single fiber perpendicular to the fiber-axis direction
is 1.00 to 1.01; a diameter of a single fiber is 4.0 µm to 6.0 µm; and
the number of voids having a diameter of from 2 nm to 15 nm present
in the cross-section of a single fiber perpendicular to the fiber-axis
direction is from 1 to 100.
Br. 11.
The obviousness rejection of claims 15-19 and 22-24 is sustained for the
reasons set forth in the Final Office Action dated August 11, 2016 ("Final Act."),
2 Joseph G. Venner, Carbon and Graphite Fibers, Kirk-Othmer Encyclopedia of
Chemical Technology (2000) ("Venner").
3 KRI00371402 (Bl) ("Hong"). We rely on the machine translation dated
November 15, 2015, which is of record in the instant Application.
4 JP 2004 225178 A, published August 12, 2004 ("Manabe").
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and the Examiner's Answer dated June 2, 2017 ("Ans."). We add the following for
emphasis.
B. DISCUSSION
1. Claims 15, 17-19 and 22-24
The Examiner finds Venner teaches that carbon fibers such as intermediate
modulus polyacrylonitrile-based (PAN-IM) fibers typically have a tensile strength
of 4.1-7.0 GPa, a modulus of280-300 GPa, and a filament diameter of 5 µm,
which overlap or fall within the claimed ranges. Final Act. 4.
As for the claimed number of voids, the Examiner finds Venner "teaches
that the strength of carbon fibers has increased over time from approximately 3 to
5-7 GP a due to optimization of the reduction of flaws such as pores." Final Act. 4
( emphasis added). The Examiner concludes that the low number of voids claimed
would have been obvious to one of ordinary skill in the art based on the teachings
in Venner because "it has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art." Final Act. 5 ( citing In re
Boesch, 617 F.2d272 (CCPA 1980)).
The Examiner finds Venner does not expressly disclose that the voids have a
diameter of from 2 nm to 15 nm as recited in claim 15. Final Act. 4. The
Examiner, however, finds Hong discloses that the mechanical strength of carbon
fibers can be increased by increasing the pore or void diameter from not more than
20 Angstrom (2 nm) to at least 20 Angstrom (2 nm). Final Act. 4. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art to
modify the size of Venner's pores or voids as disclosed in Hong "in order to obtain
carbon fibers having excellent properties such as electrical conductivity and high
mechanical strength." Final Act. 4.
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The Appellants argue that "the prior art fails to enable the claimed carbon
fiber bundle having a strength of 6000 MP a or more and a number of voids having
a diameter of 2 to 15 nm in the cross-section of 1 to 100." Br. 3. More
specifically, the Appellants argue:
Br. 5.
The record reflects that the properties of carbon fibers are greatly
influenced by their production method .... Since the record reflects
the effect of processing conditions can have on properties and the
cited art fails to disclose any particulars of the method of production,
the mere desire to reduce the number of voids of a particular size
within a fiber cross-section fails to enable a density of 1 to 100 and
therefore the claim is not rendered obvious.
The Examiner finds that Venner "discloses a summary of carbon fiber
manufacturing processes, disclosing several means for reducing flaws, such as
avoiding contamination or impurities at certain stages, and avoiding excessive
surface treatment." Ans. 5. The Examiner finds that Venner discloses, for
example, that "temperatures exceeding 1500 °C can result in more flaw sensitive
structures which may decrease strength because of defects such as trace metal
contaminant, surface flaws or shear failure across misaligned cyrstallites [sic]."
Ans. 5; see also Venner 4 (disclosing that "[s]pecial care is taken to avoid
contamination or impurities that may form strength reducing flaws in the carbon
fiber"); id. 7 ( disclosing that "[i]n the initial stage of carbonization, it is critical to
control the off-gases that evolve from the fiber as it is heated[; e]xcessive heating
rates result in void formation, structural disruption, and lower carbon fiber
properties" (emphasis added)); id. 8 (disclosing that "excessive surface treatment
depresses fiber tensile strength because of surface defects"). Based on those
findings, the Examiner concludes that "Venner provides details that would enable
one having skill in the art to optimize (decrease) the number of flaws in carbon
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fibers and to obtain the disclosed properties." Ans. 5. The Appellants do not
respond to the Examiner's findings or the Examiner's conclusion based on those
findings.
The Appellants argue that paragraph 6 of the Sugiura Declaration dated
April 15, 2016, "provides evidence that the claimed number of voids within a fiber
cross-section are not inherent to a high strength carbon fiber." Br. 5 ( emphasis
omitted). In particular, the Appellants argue that the Sugiura Declaration shows a
high strength carbon fiber "ha[ ving] a number of voids of a diameter of 2 to 15 nm
which is outside of the claimed range of 1 to 100." Br. 5 (emphasis omitted).
The rejection of claim 15 is not based on inherency but rather is based on the
obviousness of optimizing process parameters to reduce the number of voids in
Venner's carbon fiber. Significantly, the Sugiura Declaration does not identify the
process used to make the carbon fiber described in the Declaration. Therefore, the
Appellants' argument is not persuasive of reversible error.
The Appellants also argue that Hong is not reasonably pertinent to the
problem faced by the inventor, i.e., "a carbon fiber bundle for obtaining fiber-
reinforced plastic that has high mechanical characteristics." Br. 8; see also Br. 7
("[i]n order for a reference to be proper for use in an obviousness rejection under
35 U.S.C. 103, the reference must be analogous art to the claimed invention"
(citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004))). The Appellants argue
that they "have provided evidence of the strength of the fibers modified by Hong []
as having strengths of only 0.3 to 0.4 GPa, such that Hong [] would not have
suggested to obtain 'high mechanical strength' in the high strength carbon fibers of
Venner." Br. 7 (emphasis omitted). The Appellants, however, do not identify that
evidence in the Appeal Brief. Therefore, the Examiner's finding that "Hong is in
the same technical field of endeavor as Venner ... and the present application
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because Hong is directed to carbon fibers that have improved mechanical strength"
(Ans. 6) stands unrebutted on this record.
In sum, a preponderance of the evidence of record supports the Examiner's
conclusion of obviousness. Therefore, the rejection of claim 15 is sustained. The
Appellants do not present arguments in support of the separate patentability of any
of claims 17-19 and 22-24. Therefore, the obviousness rejection of claims 17-19
and 22-24 also is sustained.
2. Claim 16
Claim 16 depends from claim 15 and recites that "the average diameter of
the voids is 6 nm or less." Br. 11. The Appellants argue that"[ c ]laim 16 is
separately patentable as an average diameter of voids of 6 nm or less is nowhere
disclosed or suggested in the cited art of record." App. Br. 9. The Appellants,
however, recognize that Hong discloses that the pores must be at least 2 nm. Br. 9.
That range overlaps the claimed range and thus renders the claimed range prima
facie obvious. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a slight
overlap in range results in a prima facie case of obviousness).
The Appellants also argue that Hong does not suggest a number of pores of
any particular size. Br. 9-10. The Examiner, however, relies on Venner, not
Hong, to teach the claimed number of pores. See In re Keller, 642 F.2d 413,425
(CCP A 1981) (the test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art).
In sum, the Appellants do not identify a reversible error in the Examiner's
obviousness rejection of claim 16. Therefore, the rejection of claim 16 is
sustained.
C. DECISION
The Examiner's decision is affirmed.
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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)(l )(iv).
AFFIRMED
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