Ex Parte Heintz et al

Patent Trial and Appeal Board

Jan 24, 2018

12282304 (P.T.A.B. Jan. 24, 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.
12/282,304 02/01/2009 Amy M. Heintz 22154(3)US 1327
34833 7590
FRANK ROSENBERG
5737 Kanan Road, No. 190
Agoura Hills, CA 91301
01/26/2018 EXAMINER
MILLER, DANIEL H
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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
following e-mail address(es):
FRANKROSENBERG@ att.NET
correspondence@frpatents.com
US PTO @ DOCKETTRAK.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMY M. HEINTZ, JEFFREY CAFMEYER, JOEL D. ELHARD,
and BHIMA R. VIJAYENDRAN
Appeal 2016-002656
Application 12/282,304
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1—11, 14—17, 19-27, and 29-32.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Battelle Memorial Institute as the real party in interest.
Appeal Brief filed June 1, 2015 (“App. Br.”), 2.
Appeal 2016-002656
Application 12/282,304
STATEMENT OF THE CASE2
Appellants claim a process for dispersing carbon nanotubes in an
organic solvent, a carbon nanotube dispersion made by the process, a carbon
nanotube network made by depositing the dispersion onto a hydrophobic
polymeric substrate, and a carbon nanotube/polymer composite made from
the dispersion. App. Br. 2—3; claims 23—25. Appellants also claim a
structure comprising a carbon nanotube film deposited from organic solvent.
App. Br. 3; claims 26, 31.
Claims 1 and 26 illustrate the subject matter on appeal and are
reproduced below:
1. A process for dispersing carbon nanotubes in an organic
solvent, comprising:
mixing carbon nanotubes with a dispersing agent;
wherein the dispersing agent comprises long chain
hydrocarbons, halogen-substituted hydrocarbons,
fluorocarbons, or a mixture of hydrocarbons, halogen-
substituted hydrocarbons, and fluorocarbons; and
wherein the hydrocarbons, halogen-substituted
hydrocarbons and fluorocarbons have from 6 to 40 carbons in
a chain, at least one alkene or alkyne moiety, and at least one
pendant carboxylic acid, phosphonic acid, and/or sulfonic acid
group or an ester of these acids.
26. A structure comprising:
a carbon nanotube film deposited from organic solvent
wherein the carbon nanotube film exhibits:
a transmittance of about 80% at 550 nm and a sheet
resistance of 20 to about 100,000 ohms/square.
App. Br. Claims Appendix i, iv (emphasis and spacing added).
2 We heard oral arguments from Appellants’ representative on January 17,
2018.
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The Examiner sets forth the following rejections in the Final Office
Action entered October 30, 2014 (“Final Act.”), and maintains the rejections
in the Examiner’s Answer entered November 5, 2015 (“Ans.”):
I. Claims 1—4, 7—11, 14—17, 20—26, and 29—32 under 35 U.S.C.
§ 103(a) as unpatentable over Carroll (US 2002/0161101 Al; published
October 31, 2002) in view of Glatkowski (US 2003/0122111 Al; published
July 3, 2003), Chen I (US 2007/0265379 Al; published November 15,
2007), and Chen II (US 2004/0120879 Al; published June 24, 2004); and
II. Claims 3, 5, 6, 19, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Carroll in view of Glatkowski, Chen I, Chen II, and Xu
(US 2006/0121185 Al; published June 8, 2006).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejections of
claims 26, 27, 29, and 30 under 35 U.S.C. § 103(a) for the reasons set forth
in the Final Action, the Answer, and below, and reverse the Examiner’s
rejections of claims 1—11, 14—17, 19-25, 31, and 32 under 35 U.S.C.
§ 103(a) for the reasons set forth in the Appeal Brief and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellants provide for each issue the Appellants
identify. 37 C.F.R. § 41.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) {cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that “it has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”)).
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Claims 26,27, 29
Appellants argue claims 26, 27, and 29 as a group. App. Br. 10—11.
Therefore, we select claim 26 as representative, and decide the appeal as to
claims 26, 27, and 29 based on claim 26 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Glatkowski discloses transparent electrically-conductive films that
comprise carbon nanotubes dispersed substantially homogeneously
throughout a polymeric material. 3, 33, 48, 54, 60. Glatkowski discloses
that the films may be “easily formed” by applying a dispersion of the
nanotubes in a solvent such as acetone, water, an ether, or an alcohol to a
substrate, and removing the solvent by “normal processes such as air drying,
heating or reduced pressure to form the desired film of nanotubes.” 149.
Glatkowski discloses that the films have a surface resistance of less than
about 1010 ohms/square, most preferably of about 10"2—10° ohms/square.
142. Glatkowski also discloses that the surface resistance of the films “can
easily be adjusted” to adapt the films to a variety of applications that have
different target ranges for electrical conductivity. 141. Glatkowski
discloses that the films have a total light transmittance of about 80% or more
at wavelengths of less than lxl O'2, and Glatkowski discloses such
wavelengths include visible light. || 45, 46.
The Examiner finds that the films disclosed in Glatkowski have a light
transmission that meets the value recited in claim 26, and “overlapping
conductivity,” resulting in “[n]o patentable distinction” between the
structure of claim 26 and Glatkowski’s films. Final Act. 7—8.
Appellants argue that “there is not a proper motivation” for combining
the “unrelated inventions” of the applied prior art. App. Br. 10. Appellants
contend that “[tjhere is no reason to believe that any of the possible
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combinations with Carroll or Chen [I] would provide lower sheet
resistances,” and “even if Chen [II] were combined with Glatkowski, the end
result would be a polymer-CNT composite that would be expected to have
significantly lower conductivity.” App. Br. 10—11. Appellants further
assert, relying on the Declaration of Amy Heintz submitted to the Patent and
Trademark Office on July 28, 2014, that “the method of Chen [II] results in
shorter CNTs resulting in poorer conductance and would have been avoided
by the worker seeking to make conductive CNT films.” App. Br. 11; Heintz
Declaration 17.
However, as discussed above, the Examiner relies on Glatkowski
alone—rather than a combination of Carroll, Glatkowski, Chen I, and Chen
II—for disclosing a structure comprising a carbon nanotube film deposited
from organic solvent as recited in claim 26 that exhibits a transmittance and
sheet resistance as set forth in the claim. As discussed above, Glatkowski
discloses carbon nanotube films formed by applying a dispersion of
nanotubes in acetone (an organic solvent) to a substrate and removing the
solvent (a carbon nanotube film deposited from organic solvent). As also
discussed above, Glatkowski discloses that the films have a surface
resistance of less than about 1010 ohms/square (overlapping the range recited
in claim 26), and a total light transmittance of about 80% at wavelengths that
include visible light, corresponding to a transmittance of about 80% at 550
nm as recited in claim 26, rendering the claimed structure prima facie
obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003) (“In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
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case of obviousness.”). Accordingly, Appellants’ arguments are
unpersuasive of reversible error in the Examiner’s rejection.
Appellants further argue, relying on paragraph 8 of the Heintz
Declaration, that “Glatkowski does not describe any CNT films deposited
from organic solvent that possess the claimed conductivity.” App. Br. 11.
According to the Heintz Declaration, paragraphs 131 and 132 of Glatkowski
describe a film having a sheet resistance of 100 ohms/square, but this film
was produced from an “aqueous and not an organic solution,” and “films
deposited from aqueous versus organic solutions can be distinguished by
differences in morphology and/or composition.” Heintz Declaration | 8.
Appellants also contend that “Glatkowski does not enable the claimed
invention” because “from the teachings of Glatowski, a worker of ordinary
skill could not form CNT films deposited from organic solvent having the
claimed properties.” App. Br. 11.
We note initially that “a non-enabling reference may qualify as prior
art for the purpose of determining obviousness under § 103.” Symbol
Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991).
Nonetheless, a prior art reference is presumptively enabling, and Appellants
bear the burden of demonstrating otherwise. In re Antor Media Corp., 689
F.3d 1282, 1288 (Fed. Cir. 2012) (A prior art printed publication, like a prior
art patent, “is presumptively enabling barring any showing to the contrary by
a patent applicant or patentee.”).
Glatkowski exemplifies preparing ESD (electrostatic discharge) films
that include carbon nanotubes and one of three polyimides (POFYIMIDE-1,
POFYIMIDE-2, or TPO (triphenyl phosphine oxide polymer)). || 74, 75,
87—89. Glatkowski describes preparing solutions of each polyimide in NMP
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(N-methyl-2-pyrrlidone)—an organic solvent—and describes separately
adding carbon nanotubes to NMP and sonicating the nanotube/NMP
mixture. Tflf 87, 88. Glatkowski describes adding aliquots of the sonicated
nanotube/NMP mixture to each polyimide/NMP solution, casting the
samples onto glass panels, and removing the NMP. || 88, 89. Glatkowski
discloses that the electrical resistivity of the resulting films was determined.
H 90, 96—100. Although Glatkowski reports that the resistivities of the
tested films fall outside the range recited in claim 26, Glatkowski teaches
that “[f]ilms hav[ing] electrical resistivity much lower than required for ESD
applications [] can be easily designed for any level of electrical resistance
above a 100 Ohms/sq. using very low loading level of nanotub esT 1105
(emphasis added). In summarizing the results of these experimental
examples, Glatkowski further states that resistivity can be “easily adjusted
from 102 to 1012.” 174. In addition, as discussed above, Glatkowski also
teaches that the surface resistance of the films described in the reference
“can easily be adjusted” to adapt the films to a variety of applications that
have different target ranges for electrical conductivity. 141.
Accordingly, although Glatkowski may not exemplify a carbon
nanotube film deposited from organic solvent having a sheet resistance as
recited in claim 26, Glatkowski’s disclosures are not limited to its
experimental examples. In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA
1982) (A prior art reference’s disclosure is not limited to its examples.); In
re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art
reference “must be evaluated for what they fairly teach one of ordinary skill
in the art.”). Rather, Glatkowski’s broader disclosures indicate that the films
described in the reference “can be easily designed for any level of electrical
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resistance above a 100 Ohms/sq.” by adjusting the loading level of
nanotubes—rather than utilizing a particular solvent. By focusing only on
select experimental examples in Glatkowski, Appellants’ arguments and
paragraph 8 of the Heintz Declaration do not consider this express disclosure
in Glatkowski, or Glatkowski’s further disclosure that the surface resistance
of the films “can easily be adjusted” from 102 to 1012to allow the films to be
adapted to a variety of applications. Appellants’ arguments and the
Declaration, therefore, do not take into consideration the state of the art as a
whole at the time of Appellants’ invention.
It follows that Appellants do not proffer sufficient reasoning (e.g.,
reasoning based on the factors listed in In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988)) and/or evidence to demonstrate that Glatkowski’s disclosures as
a whole, in view of the state of the art at the time of Appellants’ invention,
would not have enabled one of ordinary skill in the art to produce a carbon
nanotube film deposited from organic solvent having a sheet resistance of 20
to about 100,000 as recited in claim 26 without undue experimentation. In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (explaining that undue
experimentation is determined based on both the nature of the invention and
the state of the art).
Accordingly, considering the totality of the evidence relied-upon in
this appeal, a preponderance of the evidence weighs in favor of the
Examiner’s conclusion of obviousness with respect to claim 26. Velander v.
Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to
prior publications than to subsequent conclusory statements by experts, the
Board acted well within [its] discretion.”); Yorkey v. Diab, 601 F.3d 1279,
1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one
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item of evidence over another “unless no reasonable trier of fact could have
done so”). We accordingly sustain the Examiner’s rejection of claims 26,
27, and 29 under 35 U.S.C. § 103(a).
Claim 30
Claim 30 depends from claim 26 and recites that the carbon nanotube
film is deposited on a hydrophobic polymeric substrate. Appellants argue
that “[ajqueous compositions such as Glatkowski’s could not form coatings
on hydrophobic surfaces since such surfaces repel water.” App. Br. 11.
However, as discussed above, Glatkowski’s disclosures are not
limited to “aqueous compositions.” Rather, Glatkowski discloses carbon
nanotube films formed by applying a dispersion of nanotubes in an organic
solvent to a substrate, and removing the solvent. Accordingly, because
Appellants’ arguments do not take into consideration these disclosures in
Glatkowski, Appellants’ arguments are unpersuasive of reversible error. We
accordingly sustain the Examiner’s rejection of claims 30 under 35 U.S.C.
§ 103(a).
Claims 1—11, 14—17, 19—22, 31, and 32
As set forth above, the process of claim 1 requires carbon nanotubes
to be mixed with a dispersing agent comprising hydrocarbons, halogen-
substituted hydrocarbons, and/or fluorocarbons having 6 to 40 carbons in a
chain. Claim 1 further requires the hydrocarbons, halogen-substituted
hydrocarbons, and/or fluorocarbons to have at least one alkene or alkyne
moiety, and at least one pendant carboxylic acid, phosphonic acid, and/or
sulfonic acid group, or an ester of these acids.
The Examiner finds that Carroll discloses “carbon nanotubes (single
walled or multi-walled) dispersed in a polymer matrix forming transparent
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films with a monomer that can include a halide, including fluoropolymer
(dispersing agent) that disperses the nanotubes.” Final Act. 2 (citing Carroll
Examples; H 47, 82—83; claims 1—22). The Examiner finds that Carroll
discloses introducing the carbon nanotubes into an ethylacetamide solvent
(volatile organic solvent), sonicating for several hours, casting the material
on a wafer, and heating the cast material to high temperature to remove the
solvent and form a film. Final Act. 2 (citing Carroll H 65, 66). The
Examiner finds that Carroll does not disclose dispersing agents as recited in
claim 1, and the Examiner relies on Chen I to remedy this deficiency of
Carroll. Final Act. 3—6.
The Examiner finds that Chen I discloses polymer/carbon nanotube
composites comprising a polymer having an R group bonded to a backbone
via a carbon-carbon or oxygen-carbon bond. Final Act. 4 (citing Chen 1 55).
The Examiner finds that Chen discloses that the R group is designed to
adjust the solubility of the carbon nanotube in various solvents, and the R
group may include additional functional groups distal to the backbone at the
periphery of the R group, such as alkene, alkyne, alkyl halide, carboxylic
acid, ester, ketone, sulfonic acid, sulfonic acid ester, and combinations
thereof. Final Act. 4—5 (citing Chen 155). The Examiner finds that Chen I
discloses that the functional groups at the periphery of the R groups enhance
interaction between the functionalized, solubilized carbon nanotubes and the
host matrix of the composites by improving the interfacial bonding between
the functionalized, solubilized carbon nanotubes and the host matrix. Final
Act. 5 (citing Chen 1 56). The Examiner finds that the “dispersing agents”
disclosed by Chen I “are considered to encompass and/or overlap at least
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independent claim 1, and suggest substantially identical or similar structures
to those claimed.” Final Act. 5.
We note initially that it is unclear what exactly the Examiner relies on
in Chen I as corresponding to the dispersing agent recited in claim 1. Chen I
discloses nanocomposites in which solubilized carbon nanotubes are
dispersed within a host polymeric matrix. || 36—37. Chen I discloses
numerous suitable polymer matrices that include nylon, polyethylene, epoxy
resin, polyisoprene, sbs rubber, and polydicyclopentadiene. 139.
Chen I discloses solubilizing—rather than dispersing—the carbon
nanotubes in solvents by functionalizing the nanotubes with a rigid,
conjugated polymer having a backbone portion that noncovalently bonds
with the nanotubes in a non-wrapping fashion. ^47, 48, 58. Chen I
discloses numerous suitable backbone portions for the rigid, conjugated
polymer, which are large polymeric molecules, such as poly(phenylene
ethynylene) (PPE), poly(arylene ethynylene), and poly(3-decylthiophene),
among others. 48, 58. Chen I discloses that R groups bonded to the
backbone portion of the rigid, conjugated polymer via a carbon-carbon or
carbon-oxygen bond adjust the solubility of the carbon nanotubes in various
solvents. 1 55. Chen I discloses that the R groups may include additional
functional groups at their periphery distal to the backbone that enhance
interaction of, and improve interfacial bonding between, the functionalized,
solubilized carbon nanotubes and the host matrix. || 55, 56.
Chen I describes an exemplary nanocomposite in which
poly(phenyleneethynylene) (PPE) polymers with linear or branched glycol
side chains provide single-wall carbon nanotubes with high solubility in
dimethylformamide (DMF) or N-methyl-2-pyrrolidone (NMP), allowing
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uniform mixing of the single-wall carbon nanotubes with host polymers,
such as polyacrylonitrile. 1 55.
As mentioned above, the Examiner does not provide a sufficient
explanation supported by factual findings to allow us to determine what the
Examiner relies on in Chen I as corresponding to the dispersing agent recited
in claim 1. Although Chen I discloses that the functional groups at the
periphery of the R groups bonded to the backbone portion of the rigid,
conjugated polymer described in the reference can include alkene, alkyne,
carboxylic acid, sulfonic acid, and sulfonic acid ester moieties as recited in
claim 1, the Examiner does not establish that the backbone portion of the
rigid, conjugated polymer disclosed in Chen I has “from 6 to 40 carbons in a
chain” as required by claim 1. Accordingly, the Examiner does not establish
that the rigid, conjugated polymer disclosed in Chen I corresponds to a
dispersing agent as recited in claim 1.
Although the Examiner asserts that “the Chen reference specifically
discusses molecules that would encompass a maximum of 40 carbon
chains,” the Examiner does not identify with particularity where any such
molecules are disclosed in Chen I. Ans. 11. Nor does the Examiner provide
a reasoned explanation supported by objective evidence of why Chen’s
disclosure of backbone portions of the rigid, conjugated polymers that are
large polymeric molecules such as poly(phenylene ethynylene) (PPE),
poly(arylene ethynylene), and poly(3-decylthiophene) would have suggested
hydrocarbons, halogen-substituted hydrocarbons, and/or fluorocarbons
having 6 to 40 carbons in a chain, as required by claim 1.
Therefore, the Examiner’s evidence and explanation are insufficient to
establish a prima case of obviousness of the subject matter recited in claim
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1. We accordingly do not sustain the Examiner’s rejection of claims 1—11,
14—17, 19-22, 31, and 32 under 35 U.S.C. § 103(a).
Claims 23, 24, 25
Claim 23 recites a carbon nanotube dispersion made by the process of
claim 1, claim 24 recites a carbon nanotube network made by depositing the
dispersion of claim 1 onto a hydrophobic polymeric substrate, and claim 25
recites a nanotube/polymer composite made from the dispersion of claim 1.
“[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself.”
In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985). Accordingly, the
patentability of claims 23, 24, and 25 is based on the recited carbon
nanotube dispersion, carbon nanotube network, and nanotube/polymer
composite, respectively, rather than processes used to produce these
products.
Nonetheless, as discussed above, the Examiner does not establish that
the rigid, conjugated polymers disclosed in Chen I correspond to a
dispersing agent as recited in claim 1. The Examiner also does not establish
that a carbon nanotube dispersion produced by mixing carbon nanotubes
with Chen I’s rigid, conjugated polymer; a carbon nanotube network made
by depositing carbon nanotubes mixed with Chen I’s rigid, conjugated
polymer onto a hydrophobic polymeric substrate; and a nanotube/polymer
composite made by mixing carbon nanotubes with Chen I’s rigid, conjugated
polymer, would have a structure that is the same as, or substantially similar
to, a carbon nanotube dispersion made by mixing carbon nanotubes with a
dispersing agent of claim 1, as recited in claim 23; a carbon nanotube
network made by depositing carbon nanotubes mixed with a dispersing
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agent of claim 1 onto a hydrophobic polymeric substrate, as recited in claim
24; and a nanotube/polymer composite made by mixing carbon nanotubes
with a dispersing agent of claim 1, as recited in claim 25, respectively.
We accordingly do not sustain the Examiner’s rejection of claims 23—
25 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 26, 27, 29, and 30 under
35 U.S.C. § 103(a), and reverse the Examiner’s rejections of claims 1—11,
14—17, 19-25, 31, and 32 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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