Ex Parte Hoekstra et al

Patent Trial and Appeal Board

Feb 28, 2017

13203581 (P.T.A.B. Feb. 28, 2017)

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.
13/203,581 03/05/2012 J. Hoekstra 31239-9 8788
131890 7590 03/01/2017
LOWENSTEIN SANDLER LLP / BASF
Patent Docket Administrator
65 Livingston Avenue
Roseland, NJ 07068
EXAMINER
MAYES, MELVIN C
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
03/01/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte J. HOEKSTRA, JOHN WILHELM GEUS,
and L. W. JENNESKENS 1
____________

Appeal 2015-000715
Application 13/203,581
Technology Center 1700
____________

Before CHUNG K. PAK, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision2 finally rejecting claims 11‒13 and 18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify the real party in interest as BASF Corporation. Appeal
Brief filed August 13, 2014 (“App. Br.”) at 3 and Supplemental Appeal
Brief filed August 28, 2014 (“Supp. App. Br.”) at 1‒3.
2 Final Action entered June 26, 2014 (“Final Act.”) at 2‒10; Advisory
Action entered July 28, 2014 (“Adv. Act.”) at 2‒3; and the Examiner’s
Answer entered October 9, 2014 (“Ans.”) at 2‒9.
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Application 13/203,581

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STATEMENT OF THE CASE
Details of the appealed subject matter are recited in illustrative claims
11 and 18,3 which are reproduced below from the Claims Appendix of the
Appeal Brief (with disputed limitations in italicized form):
11. Carbon nanotubes and/or nanofibers, prepared by the
process for producing carbon nano fibers and/or tubes, which
process comprises pyrolyzing a particulate cellulosic and/or
carbohydrate substrate that has been impregnated with a
compound of an element or elements, the metal or alloy,
respectively, of which is capable of forming carbides, in a
substantially oxygen free, volatile silicon compound containing
atmosphere, optionally in the presence of a carbon compound.

18. Carbon nanotubes and/or nanofibers, prepared by the
process which comprises pyrolyzing a particulate cellulosic
and/or carbohydrate substrate that has been impregnated with
a compound of an element or elements, the metal or alloy,
respectively, of which is capable of forming carbides, in a
substantially oxygen free, volatile silicon compound containing
atmosphere, optionally in the presence of a carbon compound
wherein:
the substrate comprises carbonaceous bodies produced by a
hydrothermal treatment of agricultural materials, such as,
sugars, starch, soy meal, (hemi)cellulose, as well as dehydrated
products of the above compounds, such as, furfural and 2-
hydroxyfurfural;
the substrate is impregnated with a compound of nickel, cobalt,
iron and/or molybdenum, preferably aqueous nickel and/or iron
salt, followed by drying and pyrolyzing; and the said substrate

3 Appellants present arguments directed to the subject matter recited in
claims 11 and 18 and then rely upon those arguments to impart patentability
to the subject matter recited in claims 12 and 13. App. Br. 6‒10 and Reply
Brief filed October 16, 2014 (“Reply Br.”) at 3‒6. Therefore, for purposes
of this appeal, we limit our discussion to claims 11 and 18. 37 C.F.R.
§ 41.37(c)(1)(iv) (2012).
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is pyrolyzed in the presence of a silicon rubber compound,
wherein the said substrate is selected from microcrystalline
cellulose, sugar, or a mixture of sugar and microcrystalline
cellulose or soy meal.

App. Br. 12, Claims Appendix.

The Examiner maintains, and Appellants seek review of, the
following grounds of rejection:4
1. Claims 11 and 18 under pre-AIA 35 U.S.C. §102(e) as
anticipated by Kim (US 2009/0176646 A1, published in the name of Kim et
al. on July 9, 2009); and
2. Claims 12 and 13 under pre-AIA 35 U.S.C. §103(a) as
unpatentable over the combined teachings of Kim and Chung (KR
2007047955 A, published in the name of Chung on May 8, 2007). Final
Act. 2‒10 and Ans. 2‒9.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the respective positions advanced by the Examiner and Appellants, we
determine that a preponderance of the evidence supports the Examiner’s
determination that the applied prior art would have rendered the subject
matter recited in claims 11‒13 and 18 obvious to one of ordinary skill in the
art within the meaning of 35 U.S.C. §§ 102(e) and 103(a). Accordingly, we
sustain the Examiner’s §§ 102(e) and 103(a) rejections of the above claims
substantially for the reasons set forth in the Final Action, the Advisory

4 The Examiner has withdrawn the rejection of claim 7 under 35 U.S.C.
§112, second paragraph, set forth in the Final Action. Ans. 10.
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Action, and the Answer. We add the following primarily for emphasis and
completeness.
Claims 11 and 18 under pre-AIA 35 U.S.C. §102(e)
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” because “[c]laim
interpretation, . . . will normally control the remainder of the decisional
process.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567–68
(Fed. Cir. 1987). During examination, claims terms must be given their
broadest reasonable construction consistent with the specification. In re
Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he
PTO must give claims their broadest reasonable construction consistent with
the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms but otherwise apply a broad
interpretation.”). “It is the applicants’ burden to precisely define the
invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).
Claims 11 and 18, as written, are directed to carbon nanotubes and/or
nanofibers which are further defined by a process. Claims 11 and 18 recite
this process as involving “pyrolyzing a particulate cellulosic and/or
carbohydrate substrate that has been impregnated with a compound of an
element or elements, the [sic., a] metal or alloy, respectively[.]” The
compound of an element or elements, the metal, or the alloy “is capable of
forming carbides, in a substantially oxygen free, volatile silicon compound
containing atmosphere, optionally in the presence of a carbon compound.”
Id. Claim 18, unlike claim 11, further identifies this compound, metal, or
alloy as “a compound of nickel, cobalt, iron and/or molybdenum, preferably
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aqueous nickel and/or iron salt[.]”5 See also Spec. 3, ll. 24‒30. Claim 18
also limit the particulate cellulosic and/or carbohydrate as comprising
“carbonaceous bodies produced by a hydrothermal treatment of agricultural
materials, such as, sugars, starch, soy meat, (hemi)cellulose, as well as
dehydrated products of the above compounds, such as furfural and 2-
hydroxyfurfural” and as being “selected from microcrystalline cellulose,
sugar, or a mixture of sugar and microcrystalline cellulose or soy meal.”
Claim 18 further requires that the metal compound impregnated substrate be
pyrolized in the presence of a silicon rubber compound. Claims 11 and 18,
by virtue of using the transition term “comprises,” permit the inclusion of
additional steps directed to forming CNF [(carbon nanotubes and/or
nanofibers)] even though such steps are not recited. In re Baxter, 656 F.2d
679, 686–87 (CCPA 1981) (“As long as one of the monomers in the reaction
is [claimed] propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”)
The Specification, for example, states that “[b]ecause CNF consist of
carbon, a carbon-containing gas is needed for the synthesis of these
materials. In a preferred embodiment this gas is generated by the pyrolysis
of the carbon spheres, but in an alternative embodiment, additional [carbon
containing] gas may be supplied from an external source.” Spec. 5, ll. 10‒

5 Although it is not clear whether Appellants intend to limit the compound,
metal, or alloy recited in claim 18 to “a compound of nickel, cobalt, iron
and/or molybdenum” or “aqueous nickel and/or iron salt[,]” we will address
the prior art rejections of record to avoid piece meal appeal and in the
interest of administrative economy because either interpretation requires a
nickel salt which is taught by the applied prior art. However, in the event of
further prosecution, both the Examiner and Appellants are advised to clarify
such language in claim 18.
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13. The Specification also states that “[a]fter the production of the CNF’s it
is further possible to modify them, for example to remove the metal even
further and/or introduce oxygen containing groups on the surface of the
CNF’s, to produce oxidized CNF’s.” Spec. 6, ll. 7‒9.
With the above claim interpretation in mind, we evaluate the propriety
of the Examiner’s §103(a) rejections. We must be mindful that “even
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,
777 F.2d 695, 697 (Fed. Cir. 1985). “If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” Thorpe, 777 F.2d at 697. “[T]he Patent Office bears a lesser
burden of proof in making out a case of prima facie obviousness for product-
by-process claims because of their peculiar nature than would be the case
when a product is claimed in the more conventional fashion.” In re
Fessmann, 489 F.2d 742, 744 (CCPA 1974).
Here, the Examiner finds, and Appellants do not dispute, that Kim
teaches forming carbon nanotubes and/or nanofibers which appear to be
similar to those recited in claims 11 and 18. Compare Final Act. 7 and Ans.
8, with App. Br. 8; compare also Kim Fig. 4, with Appellants’ Figs. 1 and 4.
In addition, the Examiner correctly finds that Kim teaches, inter alia,
pyrolyzing cellulose fibers at a temperature of 700o C, impregnating the
carbonized cellulose fibers with an aqueous solution having a concentration
of 0.1 mol using nickel nitrate or acetate as a precursor, and pyrolizing the
nickel impregnated cellulose fibers at a temperature of from 500o C to
700o C in the presence of a carbon containing gas to grow the carbon
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nanotubes. Ans. 8 and Kim ¶¶ 55‒60, Example 1. In other words, the
process for making carbon nanotubes/nanofibers taught by Kim is also
substantially identical to those included in claims 11 and 18. The burden is,
therefore, shifted to Appellants to prove that the prior art carbon
nanotubes/nanofibers do not necessarily or inherently possess the
characteristics of the claimed nanotubes/nanofibers. As stated by the
predecessor to our reviewing court:
Where . . . the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
See In re Ludtke, supra. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by
the PTO’s inability to manufacture products or to obtain and
compare prior art products. See In re Brown, 459 F.2d 531, 59
CCPA 1036, 173 USPQ 685 (1972).
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added).
Rather than identifying the difference between the characteristics or
properties of the nanotubes/nanofibers taught by Kim and those of the
nanotubes/nanofibers recited in claims 11 and 18, Appellants appear to focus
on the differences between the process for making nanotubes/nanofibers
taught by Kim and the process limitations recited in claims 11 and 18. App.
Br. 8 and Reply Br. 3‒5. However, claim 18, like Kim, impregnates the
carbonized cellulose material with an aqueous solution having a nickel salt.
Claim 11 likewise does not exclude precarbonizing the cellulose substrate
before impregnating it with an aqueous solution having a nickel salt. Baxter,
656 F.2d at 687. Claims 11 and 18 do not exclude supplying a carbon
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source, i.e., a carbon containing gas, or exclude treatment of the carbonized
substrate with sulfuric acid. Baxter, supra. Although claim 18, unlike claim
11, requires the presence of a volatile silicon compound (a silicon rubber
compound) during the pyrolysis or pyrolyzation of the metal impregnated
carbonized cellulose substrate, Appellants do not argue, much less
demonstrate, that the presence of the silicon rubber compound, which is
volatilized during the pyrolyzation, causes the structure and/or properties of
the carbon nanotubes/nanofibers recited in claim 18 patentably different
from the carbon nanotubes/nanofibers taught by Kim.6
Accordingly, we find no reversible error in the Examiner’s finding
that Kim renders the subject matter recited in claims 11 and 18 anticipated
within the meaning of 35 U.S.C. §102(e).
Claims 12 and 13 under 35 U.S.C. §103(a)
As to claims 12 and 13 rejected under 35 U.S.C. §103(a) as
unpatentable over the combined teachings of Kim and Chung, Appellants
appear to rely on the same arguments advanced in connection with claim 11

6 To the extent that claim 18 may indicate that the presence of, inter alia, a
silicon rubber compound may cause the formation of a metal carbide, such
metal carbide would be reasonably expected to be present in Kim’s
nanotubes/nanofibers as well because one of ordinary skill in the art would
have reasonably expected that using a carbonizing gas (a carbon containing
gas) in the presence of the impregnated metal and hydrogen (non-oxydizing
gas) at a temperature of 500 or 700o C. would promote the formation of a
metal carbide. In any event, as indicated supra, claim 18 does not exclude a
step of removing metals or metal carbides subsequent to the formation of its
carbon nanotubes/nanofibers. Baxter, supra; compare also Spec. 6, ll. 7‒9,
with Kim ¶ 60.

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to impart patentability to the subject matter recited in claims 12 and 13.
Reply Br. 5‒6.
Accordingly, based on the same reasoning set forth above, we find no
reversible error in the Examiner’s determination that Kim and Chung would
have rendered the subject matter recited in claims 12 and 13 obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C. §103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims
11‒13 and 18 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED