Ex Parte Hirose et al

Patent Trial and Appeal Board

Sep 23, 2016

12478792 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/478,792 0610512009 Y oshiaki HIROSE
22850 7590 09/27/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
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.
342922USODIV 1137
EXAMINER
KENNEDY, TIMOTHY J
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIAKI HIROSE and HIDEKI INOMOTO
Appeal2014-008550
Application 12/478,792
Technology Center 1700
Before PETER F. KRATZ, BEYERL YA. FRANKLIN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-20. An oral hearing was held on
September 15, 2016.3 We have jurisdiction under 35U.S.C. § 6(b). We
affirm.
1 Appellants identify the real party in interest as Toyo Tanso Co., Ltd.
Appeal Brief filed October 7, 2013 ("App. Br."), 1.
2 Final Office Action mailed July 11, 2013 ("Final Act.").
3 The record will include a transcript of the oral hearing when it becomes
available.
Appeal2014-008550
Application 12/478,792
The subject matter on appeal relates to a method of producing
flexible, high purity expanded graphite sheets. Claim 1, reproduced below,
is illustrative of the claims on appeal.
1. A method of producing flexible, high-purity expanded
graphite sheets which comprises subjecting graphite to
expansion treatment to give expanded graphite, pressing the
expanded graphite by compression molding to obtain an
expanded graphite sheet having a bulk density of 0.7 to
1.3 g/cm3, cutting the expanded graphite sheet into a desired
shape and then subjecting the shaped sheet to treatment for
attaining high purity.
App. Br. (Claims Appendix) i.
REJECTIONS ON APPEAL
1. Claims 1, 3, 5, 7, 9, 11, 13, 15, and 17 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Kubota et al. 4 (JP 262060,
published April 4, 1997) (hereinafter "Kubota") in view of
Yamada et al. (US 4, 146,401 , issued Mar. 27, 1979) (hereinafter
"Yamada");
2. Claims 2, 4, 6, 8, 10, 12, 14, 16, and 18 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Kubota in view of
Hirschvogel et al. (US 4,216,266, issued Aug. 5, 1980) (hereinafter
"Hirschvogel") and Yamada;
3. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kubota in view of Yamada, and further in view of Derwent
Acc. No. 1978-63523A describing DD 131640 (1978); and
4 We refer to the machine translation of record of Kubota as cited by the
Examiner and Appellants. Final Act. 3--4; App. Br. 5.
2
Appeal2014-008550
Application 12/478,792
4. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kubota in view of Hirschvogel and Yamada, and in further
view of Derwent Acc. No. 1978-63523A describing DD 131640
(1978).
ANALYSIS
Appellants' arguments focus on limitations that appear in claim 1.
Appellants do not present separate arguments for the patentability of
independent claim 2 or dependent claims 3-20. 37 C.F.R. § 41.37(c)(iv)
(noting that an argument that merely points out what a claim recites is not a
separate argument). Consequently, we select claim 1 as representative of the
rejected claims, and claims 2-20 will stand or fall with claim 1.5
The Examiner finds that Kubota teaches a method for producing an
expanded graphite sheet that includes subjecting graphite to expansion
treatment, compression molding the expanded graphite with a press to obtain
an expanded graphite sheet having a bulk density of 1.0 g/cm3, and then
treating the expanded graphite sheet in an atmosphere of difluoromethane to
obtain a high purity expanded graphite sheet (Kubota 6-7 (Reference
example 1; Embodiment 1 )). Final Act. 3--4. The Examiner acknowledges
that Kubota does not teach cutting the expanded graphite sheet prior to the
purification treatment. Id. at 4. The Examiner, however, finds that Yamada
teaches producing a graphite product in a prescribed shape by expanding
graphite particles, compression molding the graphite particles into a graphite
5 Because we find no deficiency in Rejection 1, Appellants' arguments to the
effect that the additional cited reference( s) fail to cure the deficiency in
Rejection 1 do not amount to a separate substantive argument with respect to
any of the claims subject to Rejections 2--4. App. Br. 12-14.
3
Appeal2014-008550
Application 12/478,792
sheet material, and then punching ("cutting") the prescribed shape from the
graphite sheet (Id. at 4:7--40). Final Act. 4. 6 The Examiner finds that one of
ordinary skill in the art would have been motivated to cut Kubota' s graphite
sheet after compression molding, based on Yamada' s teaching, to obtain a
graphite material with a desired shape. Final Act. 4.
Appellants argue that Kubota does not teach or suggest the claimed
method because Kubota's graphite sheet has a bulk density of 1.3 g/cm3
after, not before, purity treatment. See App. Br. 6. This argument is not
persuasive because in addition to teaching press molding an expanded
graphite sheet after purification to obtain a high purity expanded graphite
sheet having a bulk density of 1.3 g/cm3 (Kubota 7 (Embodiment 1 ), Kubota
also expressly teaches press molding expanded graphite particles prior to
purification to obtain an expanded graphite sheet having a bulk density of
1.0 g/cm3, which is within the range recited in claim 1. Kubota 6 (Reference
example 1 ). Moreover, as the Examiner points out, claim 1 uses the open-
ended transitional phrase "comprising," and thus does not exclude additional
steps from the recited process. See Examiner's Answer mailed June 26,
2014, 11.
Appellants argue that Yamada neither discloses nor suggests any
reason for modifying Kubota. App. Br. 7. Appellants also argue that even if
Yamada and Kubota were combined, it would not result in the claimed
process. App. Br. 9 (arguing the combination would result in a process of
expanding, pressing the expanded graphite into a graphite sheet, purifying
6 Appellants admit a Thomson die, as recited in claim 3, is a commonly used
general die cutter/punch, as evidenced by JP 2005-262418 (published
September 29, 2005), JP 2009-023007 (published February 5, 2009), and JP
2011-005607. See Response After Final filed October 11, 2013, 2.
4
Appeal2014-008550
Application 12/478,792
the graphite sheet, and then cutting the sheet into a desired shape).
Appellants' arguments are not persuasive. Kubota teaches press molding its
graphite sheet both before and after purification treatment. Kubota 7
(Embodiment 1 ). Yamada teaches that an expanded graphite sheet can be
cut after press molding to achieve a desired shape. Yamada 4:7--40. One of
ordinary skill in the art looking to obtain a graphite sheet in a desired shape
would be prompted, based on Yamada's teaching, to cut Kubota's graphite
sheet after either press molding step, i.e., before or after purification. Thus,
contrary to Appellants' argument, combining the teachings of Kubota and
Yamada would result in the claimed process. Further, although Kubota's
Embodiment 2 appears to teach cutting the graphite sheet after purification,
there is nothing in Kubota that discourages cutting the graphite sheet prior to
purification. Nor have Appellants provided a reason why cutting could not
have been performed in Kubota's method prior to purification treatment.
Finally, Appellants argue that if a purification step were carried out in
Yamada, the primary object of Yamada would be frustrated. App. Br. 9.
Appellants' argument is not persuasive because it fails to address the
Examiner's proposed modification. The Examiner does not propose adding
Kubota's purification step to Yamada's process. Rather, the Examiner
proposes adding Yamada's cutting step to Kubota's process. Final Act. 4;
see also Ans. 4, 12. As discussed above, a preponderance of the evidence
supports the Examiner's proposed motivation for modifying Kubota to
include Yamada' s cutting step prior to purification.
DECISION
For the above reasons, the rejections of claims 1-20 are affirmed.
5
Appeal2014-008550
Application 12/478,792
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
6