Ex Parte Hassel et al

Patent Trial and Appeal Board

Sep 20, 2016

12736068 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121736,068 09/07/2010
21171 7590 09/22/2016
STAAS & HALSEYLLP
SUITE 700
1201 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
JOrg Hassel
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.
2454.1171 5188
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG HASSEL, HANS-RICHARD KRETSCHMER,
DANIEL REZNIK, and ARNO STECKENBORN
Appeal2014-007841
Application 12/736,068
Technology Center 1700
Before TERRY J. OWENS, JEFFREY T. SMITH, and BRIAND. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 16-29. We have jurisdiction. 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellants, the real party in interest is SIEMENS
AKTIENGESELLSCHAFT. Appeal Br. 2.
Appeal2014-007841
Application 12/736,068
STATEMENT OF THE CASE
Appellants describe the present invention as relating to a strand-like
material composite consisting of carbon nanotube ("CNT") yams. Spec i-fi-1
2-3. This material could be used to produce a low-cost composite
conductor. Id. at 7. Claim 16, reproduced below with emphases added to
certain key recitations, is the only independent claim on appeal and is
illustrative of the claimed subject matter:
16. A process for producing a strand material composite,
compnsmg:
providing a carbon nanotube ( CNT) source;
forming an elementary CNT yam by pulling a CNT fiber
away from the CNT source;
enveloping each elementary CNT yarn with a metallic
component;
joining together a plurality of the elementary CNT
yarns enveloped with the metallic component to form a larger
diameter yam;
enveloping the larger diameter yarn with the metallic
component to form a metallic matrix which spans the larger
diameter yam; and
continuing to join together yarns of larger diameter
and enveloping the yarns of larger diameter until a required
cross-sectional area of the strand material composite is
achieved.
Appeal Br. 2 15 (Claims Appendix).
2 In this decision, we refer to the Final Office Action mailed October 11,
2013 ("Final Act."), the Appeal Brief filed March 26, 2014 ("Appeal Br."),
and the Examiner's Answer mailed May 22, 2014 ("Ans.").
2
Appeal2014-007841
Application 12/736,068
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Evans et al.
(hereinafter "Evans")
Jones
Kochman et al.
(hereinafter "Kochman")
Zhang et al.
(hereinafter "Zhang '71 O")
us 2, 195,592 Apr. 2, 1940
US 3,550,247 Dec. 29, 1970
US 2001/0025846 Al Oct. 4, 2001
WO 2007/015710 A2 Nov. 9, 2005
Xiabo Zhang et al., Spinning and Processing Continuous Yarns from 4-Inch
Wafer Scale Super-Aligned Carbon Nanotube Arrays, Adv. Mater. 2006, 18,
1505-1510 (2006) (hereinafter "the Zhang Article").
REJECTIONS
The Examiner has withdrawn rejections under 35 U.S.C. § 112. The
Examiner maintains the following rejections on appeal:
Rejection 1. Claims 16, 18, 19, 22, and 23 under 35 U.S.C. § 103 as
unpatentable over Evans in view of Zhang '710 and the Zhang Article.
Ans. 3.
Rejection 2. Claims 17, 24, 25, and 29 under 35 U.S.C. § 103 as
unpatentable over Evans in view of Zhang '710 and the Zhang Article and
further in view of Kochman. Id. at 10-11.
Rejection 3. Claims 20 and 21under35 U.S.C. § 103 as unpatentable
over Evans in view of Zhang '710 and the Zhang Article and further in view
of Jones. Id. at 13.
Rejection 4. Claims 26 and 27 under 35 U.S.C. § 103 as unpatentable
over Evans in view of Zhang '710 and the Zhang Article and further in view
ofKochman and Jones. Id. at 15-16.
3
Appeal2014-007841
Application 12/736,068
Rejection 5. Claim 28 under 35 U.S.C. § 103 as unpatentable over
Evans in view of Zhang '710 and the Zhang Article and further in view of
Kochman and Jones. Id. at 18.
ANALYSIS
Claim 16 requires enveloping each carbon nanotube yam with a
metallic component, joining together carbon nanotube yams coated with the
metal to form a larger diameter yarn, enveloping the larger diameter yam
with the metallic component, and continuing to join together yams of larger
diameter and enveloping the yams of larger diameter until a required cross-
sectional area of the strand material composite is achieved. This process is
illustrated by Figures 2-7 of the Specification. See also Spec. 7-8; 16-17.
According to the Specification, this process has the advantage of resulting in
strands that compose 2 to 20% carbon nanotubes by volume that have a
relatively large increase in conductivity with a relatively minor outlay of
carbon nanotube material. Id. at 8.
Appellants argue that the cited references do not teach this process.
Appeal Br. 12-13 ("Perhaps it would have been obvious to continue
combining. That is, perhaps join -> join -> join would have been obvious.
However, the claims require join-> envelope-> join-> envelope .... ").
We begin our analysis of this argument by construing the recited claim term
"enveloping."
Claim 16, for example, first recites "enveloping each elementary CNT
yam with a metallic component." Appeal Br. 15 (Claims Appendix). The
elementary CNT thus starts with no metallic component, and metal is added
to enclose the CNT. The Specification explains that the "enveloping"
involves coating copper on to the CNT yams. Spec. 13-14 (referencing Fig.
4
Appeal2014-007841
Application 12/736,068
1, explaining that "[t]he CNT yams 16 span a plurality of sputter targets 15,
where copper is vapor-deposited onto them," and explaining that "CNT
yams of larger diameter 16a are subjected to further coating with
") copper.... .
Claim 16 continues by reciting 'joining together a plurality of the
elementary CNT yams enveloped with the metallic component to form a
larger diameter yam" and "enveloping the larger diameter yam with the
metallic component to form a metallic matrix which spans the larger
diameter yam." Appeal Br. 15 (Claims Appendix). The Specification
explains that the metallic matrix spanning the larger diameter is formed by
"use of a second electrochemical bath" where the larger diameter threads
"are subjected to further electrochemical coating with copper, such that the
interspaces between the CNT yams of a larger diameter 16a are filled and a
metallic matrix which respectively spans the two strands is thereby
formed .... " Spec. 14. The process is illustrated, for example by Figures
3 and 4, reproduced below:
FIG 3
26-----{
5
Appeal2014-007841
Application 12/736,068
FIG 4
1 1aa
"--25
28
Figures 3 and 4 show exemplary embodiments of the strand-like material
composite according to the invention, each as a cross-sectional view. Spec.
13. In particular, Figure 3 shows seven metal-enveloped yams joined next
to each other to form a larger diameter yam, and Figure 4 shows the next
step of Appellants' process where the larger diameter yam is further
"enveloped" with more metal coating. Spec. 16.
Based on the claims and the Specification as explained above, we
construe "enveloping" as "adding a coating layer to." Thus, "enveloping" a
larger diameter yam comprising two or more joined pieces of already
enveloped yam requires adding additional metallic component to the larger
diameter yam so that it then becomes coated with the additional metal. This
"enveloping" step is distinguished, for example, from merely pressing or
melting coated yam together without adding further coating.
Based on this claim construction and the record before us, we agree
with Appellants that the Examiner has not established that the prior art
teaches the recited "join -> envelope -> join -> envelope" steps. Appeal Br.
13. In particular, the Examiner has not established that the prior art teaches
enveloping a larger diameter yam formed from joining together already
enveloped yams. The Examiner states that Evans teaches this element at
6
Appeal2014-007841
Application 12/736,068
column 2, lines 40-42. At that paragraph (Evans 2:38-52), Evans discusses
coating carbon filaments and building up a metal matrix around the coated
filaments. Evans, however, appears to be refer to building up a metal matrix
to form a final "article of the desired shape after electro forming" rather than
teaching joining coated filaments together to form a "larger yam" and then
enveloping them. Evans 2:48-52. Evans explains that the final article, for
example, could be an airplane nose-cone reinforced with carbon filaments.
Evans 4:21-31. The Examiner does not persuasively explain why Evans
suggests yam produced by enveloping filaments, joining enveloped
filaments to form larger diameter yam, and then enveloping the larger
diameter yam.
The Examiner does not rely on any teachings of Zhang '710 as
suggesting the join/envelop/join/envelop process. See Final Act. 10-12
(explaining teachings of Zhang '710). The Examiner states that the Zhang
Article teaches joining threads together (Final Act. 13), but the Examiner
does not find that the article suggests joining enveloped yams and then
further enveloping "to form a larger diameter yam."
The Examiner concludes that it would have obvious to modify Evans
"by continuing to join together yams of larger diameter and enveloping the
yams" because it would be a mere repetition of steps. Final Act. 13. But as
explained above, the Examiner has not persuasively explained how, in the
first instance, Evans teaches formation of a "larger diameter yam" by joining
enveloped filaments and then enveloping the joined and enveloped
filaments. In other words, the Examiner has not established that the step to
be repeated (joining and then enveloping already enveloped yam) occurs
once. We therefore do not sustain the Examiner's rejection of claim 16.
7
Appeal2014-007841
Application 12/736,068
Claims 17-29 each depend from claim 16. The Examiner does not
state that the Kochman or Jones references as applied to some of those
claims further relates to the claim recitations addressed above. See Final
Act. 16-19 (explaining teachings ofKochman and Jones). We therefore also
do not sustain the Examiner's rejections of claims 17-29.
DECISION
For the above reasons, we reverse the Examiner's rejections of claims
16-29.
REVERSED
8