Ex Parte Hladik

Patent Trials and Appeals Board

Jun 14, 2019

13870497 - (D) (P.T.A.B. Jun. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/870,497 04/25/2013
23589 7590 06/18/2019
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
FIRST NAMED INVENTOR
Molly Hladik
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.
45172 3941
EXAMINER
SHAH,SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/18/2019 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOLLY HLADIK
Appeal2017-008108
Application 13/870,497
Technology Center 1700
Before JULIA HEANEY, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 requests review pursuant to 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-5, 7-14, and 28--43 of Application
13/870,497. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 This Decision refers to the Specification dated Apr. 25, 2013 ("Spec."),
Final Office Action dated May 26, 2016 ("Final Act."), Appeal Brief dated
Dec. 30, 2016 ("Appeal Br."), Examiner's Answer dated Mar. 9, 2017
("Ans."), and Reply Brief dated May 9, 2017 ("Reply Br.").
2 Appellant is the Applicant, Brewer Science Inc., which according to the
Appeal Brief is also the real party in interest. Appeal Br. 4.
Appeal2017-008108
Application 13/870,497
BACKGROUND
The subject matter on appeal relates to a carbon nanotube ( CNT)
composition in the form of a dispersion. Appeal Br. 6. The dispersion is
used for printing CNT conductive traces on a substrate. Spec. 1: 16-17.
According to Appellant, once the CNT coating has been printed, the medium
carrying the CNT has to be removable so that the unique optical and
electronic properties of the CNTs are not diminished. Id. at 1:23-25. For
example, in prior art formulations that used a low viscosity surfactant
dispersion to apply the CNTs, a post-application washing step was required
to remove the surfactant. Id. at 1 :26-29.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below, with italics indicating the limitation particularly
discussed in this Decision:
1. A dispersion comprising carbon nanotubes mixed with a
C2-C6 multifunctional alcohol, wherein said dispersion is free of
surfactants, and wherein said multifunctional alcohol is present
in said dispersion in an amount of from about 90% to 99 .999%
by weight, based upon the total weight of the dispersion taken
as 100% by weight.
Appeal Br. 1 7.
2
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Application 13/870,497
THE REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1-5, 7, 8, 11, 13, 28-34, 36, 38--40, and 42 are rejected
under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Choi. 3
Final Act. 2.
2. Claims 9, 10, 12, 35, and 41 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Choi and
Sample. 4 Id. at 5.
3. Claims 14, 37, and 43 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Choi and Lee. 5
Id. at 6.
DISCUSSION
Rejections of Claims 1-5, 7-14, 28-34, 36, 37, and 40
Each of these claims includes the recitation "wherein said dispersion
is free of surfactants" or depends from a claim including that recitation. In
connection with each of the rejections of these claims, the Examiner finds
that Choi teaches a dispersant that is free of surfactants. Final Act. 2.
Appellant argues that Choi teaches the presence of a surfactant.
Appeal Br. 8. Appellant relies on the following statement in Choi as
specifically defining its dispersant as a surfactant: "A dispersant, which is a
kind of surfactant, includes a head and a tail." Id. (citing Choi ,r 10).
Appellant asserts that this statement describes a genus-species relationship
3 Choi (US 2011/0003907 Al; publ. Jan. 6, 2011).
4 Sample (US 2010/0137528 Al; publ. June 3, 2010).
5 Lee (US 2007 /0278481 Al; publ. Dec. 6, 2007).
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Application 13/870,497
between surfactants and dispersants, i.e., "under a plain reading of the
explicit definition provided by Choi, 'surfactant' is the genus, and
'dispersant' is a species in that genus." Id. at 11. Appellant further relies on
Choi's teaching that it is desirable that a dispersant for dispersing CNTs has
"' ... (a) the heads of a dispersant to adhere to the hydrophobic surface of
carbon nanotubes, (b) the tails of a dispersant to facilitate dissolution in a
solvent."' Id. at 8-9 ( quoting Choi ,r 28). According to Appellant, a person
of ordinary skill in the art would recognize Choi's description of the head
and tail features as indicative of a surfactant, because surfactants generally
contain both hydrophobic and hydrophilic groups. Id. at 9.
The Examiner argues that the statement in Choi paragraph 10 "means
that the dispersant may have some similar properties to a surfactant but they
are not identical compounds." Ans. 2. The Examiner further relies on a
statement in Choi paragraph 11 as disclosing examples of dispersants, some
of which are not surfactants such as polyvinyl pyrrolidone, and some of
which are surfactants such as dodecyl benzene sulfonate. Id. According to
the Examiner, this statement shows that not all dispersants disclosed by Choi
are surfactants. Id. The Examiner also finds that dictionary definitions of
"surfactant" and "dispersant" show that these categories of compounds have
different functions and are not identical. Ans. 2-3. The Examiner applies
the dictionary definition of a surfactant as "something that reduces the
surface tension" to Choi, and finds that there is no evidence in Choi that a
surfactant is required to reduce the surface tension of its composition, and
therefore, Choi's dispersant is not a surfactant. Id. at 3.
We agree with Appellant that Choi does not support the Examiner's
findings. Choi clearly defines its dispersant as a kind of surfactant in
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Application 13/870,497
paragraph 10. Choi paragraph 11, by contrast, describes problems with
prior art water-based dispersants. Choi's disclosure of such conventional
water-based dispersants in paragraph 11, including polyvinyl pyrrolidone,
cannot, therefore, be viewed as example dispersants to be used in Choi' s
CNT composition. Thus, under a correct reading of Choi, the Examiner's
position that "not all dispersants disclosed by Choi are surfactants" (Ans. 2)
is untenable.
Further, the Examiner's application of dictionary definitions to Choi's
disclosure does not negate Choi' s clear definition of its dispersant as a kind
of surfactant. Choi ,r 10. Accordingly, we reverse the rejections of claims
1-5, 7-14, 28-34, 36, 37, and 406 as based on the erroneous finding.
Rejections of Claims 38, 39, and 41--43
Claim 38 is reproduced below:
38. A dispersion comprising carbon nanotubes mixed with a
C2-C6 multifunctional alcohol, said dispersion being formable
into a film having a sheet resistance of less than about 7,000
Q/sq at 85% T.
Claims 39 and 41--43 depend from claim 38. Appellant does not separately
argue dependent claims 39 and 41--43. Accordingly, dependent claims 39
and 41--43 stand or fall with claim 38.
The Examiner finds that Choi discloses a dispersant comprising
carbon nanotubes mixed with ethylene glycol or 1,3-propanediol, having
weight percent amounts of the carbon nanotubes and multifunctional alcohol
6 Although claim 40 depends from claim 38, it requires that "said dispersion
is free of surfactants."
5
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Application 13/870,497
within the claimed range, and wherein the dispersion is in the form of a film
on a substrate. Final Act. 4--5 ( citing Choi ,r,r 9, 48, 53, 97). The Examiner
further finds that Choi would intrinsically have the claimed sheet resistance
properties because it discloses the same dispersion as recited in claim 38. Id.
at 5.
Appellant argues that a person of ordinary skill in the art would not
expect Choi' s composition to have the sheet resistance property recited in
claim 38, because the presence of a surfactant in Choi would interfere with
the electronic properties of a deposited film formed from the composition.
Appeal Br. 13. Appellant relies on the Declaration of Dr. Chris Landorf
pursuant to 37 C.F.R. § 1.132, dated March 7, 2016. Dr. Landorf's
Declaration, however, does not provide any evidence showing that Choi' s
film would not have the claimed sheet resistance, but merely provides
conclusory statements. This is insufficient to rebut the Examiner's prima
facie findings and analysis. Accordingly, we affirm the rejections of claims
38, 39, and 41--43.
Rejoinder of Claims 15-27
Appellant requests rejoinder of claims 15-27, which were withdrawn
as being drawn to a non-elected invention. Appeal Br. 15. Appellant argues
that amended independent claim 15 includes all of the limitations of
presently pending claim 28, and therefore is eligible for rejoinder, along with
claims 16-27 which depend from claim 15.
We do not have jurisdiction to review the question Appellant presents.
The question of whether claims 15-27 are drawn to a non-elected invention
is a matter of examiner discretion reviewable by petition, not by appeal. Our
jurisdiction is limited to the review of the merits of rejections of claims and
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Application 13/870,497
those matters that directly relate to matters involving the merits of those
rejections. 35 U.S.C. §§ 6(b) and 134(a) (2006); In re Hengehold, 440 F.2d
1395, 1404 (CCPA 1971).
SUMMARY
We reverse the rejections of claims 1-5, 7-14, 28-34, 36, 37, and 40
as unpatentable under 35 U.S.C. § 103(a).
We affirm the rejections of claims 38, 39, and 41--43 as unpatentable
under 35 U.S.C. § 103(a).
AFFIRMED-IN-PART
7