Ex Parte Huang

Patent Trial and Appeal Board

Aug 2, 2016

12335816 (P.T.A.B. Aug. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/335,816 12/16/2008
23906 7590 08/04/2016
EIDUPONTDENEMOURSANDCOMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
Tao Huang
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.
CIA092USNA 1802
EXAMINER
SCHIFFMAN, BENJAMIN A
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
08/04/2016 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TAO HUANG
Appeal2015-001161
Application 12/335,816
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-8 and 10-26 of Application
12/335,816 under 35 U.S.C. § 103(a) as obvious. Final Act. (June 3, 2014).
Appellant 1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 E.I. du Pont de Nemours and Company is identified as the real party in
interest. Appeal Br. 1.
Appeal2015-001161
Application 12/335,816
BACKGROUND
The present Application relates to a process for forming nanofibers by
application of a polymer solution to a high speed rotating spin disk having a
flat surface. Spec. 2. The polymer solution forms a film on the spin disk
that migrates to the edge of the disk. Id. Upon leaving the disk the solvent
is vaporized and polymer nanofibers are formed. Id. at 4--5.
Claim 1 is representative of the claims at issue and is reproduced
below:
1. A nanofiber forming process comprising the steps of:
supplying a spinning solution having at least one polymer
dissolved in at least one solvent at a temperature between about
100° C. and the freezing point of the solvent to a rotating spin
disk with a rotational speed between about 4,000 rpm and about
100,000 rpm, the spin disk having a flat surface and a forward
surface discharge edge located in the plane of the rotating spin
disk at the circumference of the flat surface; issuing the spinning
solution from the spin disk along the flat surface so as to fully
wet the flat surface of the spin disk and to distribute the spinning
solution as a film toward the forward surface discharge edge of
the spin disk; and forming separate fibrous streams from the
spinning solution in the plane of the disk while the solvent
vaporizes to produce polymeric nanofibers of diameter 800 nm
or less; wherein the flat surface defines a plane, the plane is
perpendicular to the axis of rotation of the disk, and the surface
and the forward discharge edge are all in the plane.
Appeal Br. 18 (Claims App.).
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Application 12/335,816
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-8, 10-16, and 22-26 are rejected under 35 U.S.C.
103(a) as being unpatentable over Snowden '3362 in view ofFuruya3 and
Snowden '783. 4 Final Act. 3.
2. Claims 17-20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Snowden '336 and Furuya and Snowden '783 further in
view of Armantrout. 5 Final Act. 8.
3. Claim 21 is rejected under 35 U.S.C. 103(a) as being
unpatentable over Snowden '336 in view of Armantrout, Furuya, and
Snowden '783 and further in view ofKleinmeyer. 6 Final Act. 9.
DISCUSSION
The Examiner rejected claims 1-8, 10-16, and 22-26 as obvious over
Snowden '336 in view of Furuya and Snowden '783. Final Act. 3. The
Appellant argues for reversal on several bases.
"Surface Discharge Edge Located in
the Plane of the Rotating Spin Disk"
First, Appellant argues that Snowden '336 does not teach a process
where the forward discharge edge is located in the same plane as the rotating
2 US 4, 178,336, Dec. 11, 1979.
3 US 4,348,341, Sept. 7, 1982.
4 US 4,294,783, Oct. 13, 1981.
5 US 2006/0012084 Al, published Jan. 19, 2006.
6 US 2002/0089094 Al, published July 11, 2002.
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Application 12/335,816
spin disk. Appeal Br. 4. In response, the Examiner indicates that the
rejection does not rely upon Snowden '336 to teach such features, but rather
relies upon Snowden '783. Ans. 2; Final Act. i-fi-f 11, 12. Snowden '783
does appear to teach a discharge edge in the same plane as the spin disk.
Snowden '783, Fig. 3. Accordingly, the Board will not reverse on this basis.
Fiber Diameter Limitations
The Appellant further argues the cited references do not properly
teach one to make fibers of the claimed diameter. Appeal Br. 8, 14--15.
Claim 1 requires that the process "produce polymeric nanofibers of diameter
800 nm or less." The Examiner finds that Furuya teaches a method of
spinning fibers with diameters of0.1to10 microns (100 to 10,000
nanometers) which overlap the claimed range. Final Act. 4. The Examiner
further finds that one of skill in the art would recognize that variation of
certain parameters such as solution viscosity, spinning speed, cup/disk
diameter, attenuation air velocity, etc. could be optimized to obtain a desired
fiber diameter. Id.
The Appellant asserts that the Examiner's "find[ing] an optimum
configuration for spinning from Furuya and apply[ing] it to Snowden to
achieve the present results" amount to an improper taking of Official Notice.
Appeal Br. 7. The Examiner maintains that no official notice was taken.
Rather, the "purpose of the Furuya reference is to demonstrate that process
parameters, e.g. solution viscosity, rotation speed, cup/disk diameter,
attenuation air velocity, are readily controlled/optimized by the skilled
artisan and would result in fiber diameters within the claimed range."
Answer 2. The Examiner further finds that such parameters "are presented
as controllable variable[s] that the skilled artisan would recognize as tunable
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Application 12/335,816
in the process of Snowden '336 to result in the Furuya diameters." Answer
4.
Snowden '336 teaches that:
[a]s the fibres spin outwards from the cup in the presence of the
cold humid air currents and before they are dried or cured, they
continue to be drawn out and become attenuated or stretched into
fibres of smaller diameter. When they have achieved the desired
diameter and before they have had a chance to develop into
droplets or shot, they are dried and physically stabilized by heat,
and transported to a collecting zone.
Snowden '336, col. 1 :46-53 (italics added). Similarly, Furuya teaches that
"[ w ]hen the droplets of thick solution thus shaken about radially collide
against a high-pressure fluid such as, for example, hot compressed air, ...
they are stretched and dried and, as a result, converted into filaments."
Furuya, col. 2:39-46. Appellant has presented no reason to believe that
these teachings are inapposite to a flat spinning disk as opposed to an angled
or cup-shaped device. Accordingly, the Board accepts the Examiner's
finding that "the spinning variable[ s] ... are presented as controllable
variable[ s] that the skilled artisan would recognize as tunable in the process
of Snowden '336 to result in the Furuya diameters." Answer 4.
In a similar vein, Appellant seeks reversal of the rejection of claims
10 and 11. Appeal Br. 13-15. Claim 10 depends from claim 1 and adds the
limitation that "the average fiber diameter is less than about 500 nm."
Appeal Br. 19 (Claims App.). Claim 11 depends from claim 10 and further
requires that "the average fiber diameter is less than about 100 nm." Id.
" [A] prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a prima facie
case of obviousness." In re Peterson, 315 F.3d 1325, 1330, (Fed. Cir. 2003).
Here, Furuya discloses a range of 100 to 10,000 nanometers. Furuya, col.
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Application 12/335,816
2:11-13; 6:64---65. The low end of this range, 100 nanometers, falls within
the range of diameter required by both claims 10 and 11. In re Geisler, 116
F.3d 1465, 1468-71 (Fed. Cir. 1997) ("about 10 nm [100 Angstroms]" held
to fall within a range of 50 to 100 Angstroms). The Appellant contends,
however, that Furuya does not explicitly teach making fibers with an
average diameter of 100 nanometers. Appellant cites to the text of Furuya -
" [ t ]he alumina fiber is made up of mono filaments ranging in diameter from
0.1to10µ, preponderantly from 2 to 4µ" - which does indicate an average
value greater than claimed. Furuya, col. 2: 11-13. We note, however, that
claim 7 of Furuya claims a process "wherein the filaments have a diameter
of 0.1 to 10 microns." Furuya, col. 6:64---65. This would seem to encompass
filaments having an average diameter 0 .1 microns ( 100 nanometers). Even
were this not the case, it was known in the art to adjust process parameters
so as to achieve "the desired diameter," Snowden '336, col. 2:27-28, and to
make fibers with a diameter of 100 nanometers. Appellant presents no
argument regarding the criticality of the claimed average diameters.
Accordingly, the average diameter limitations of claims 10 and 11 would
have been obvious to one of skill in the art and do not provide a basis for
reversal.
"Fibrous Streams ... in the Plane of the Disk"
As an additional basis for appeal, Appellant asserts that neither
Snowden nor Furuya, separately or in combination, teach that the spinning
solution is distributed "as a film toward the forward surface discharge edge
of the spin disk; and forming separate fibrous streams from the spinning
solution in the plane of the disk." Appeal Br. 13. The Examiner responds
that "[t]his process occurs in the combination as the solution is issued as a
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Application 12/335,816
film along the surface in Snowden '336" and Snowden '783 "provides a flat
surface and a discharge edge at the circumference and in the plane (FIG. 3)."
Answer 3. The Examiner further asserts that "[t]he fact that flat surfaces are
disposed within passages (FIG. 4 and 5) [of Snowden '783] is not precluded
by the instant claim." Id.
In its Reply brief, Appellant states that it "fail[ s] to understand from
where the Examiner derives the assertion that the division of the polymer
flow into separate streams occurs in the plane of a disk." Reply Br. 4. The
Examiner describes Appellant's contention to be "that Snowden '783 divides
the fibre-forming material into separate streams prior to issuing the streams
from spinning device as opposed to the instant claims." Answer 3 (italics
added). Alternatively, Appellant may be arguing that the polymer solution
of Snowden '783 is separated into multiple channels above the plane of the
spin disk. As a consequence, the combination would not form "separate
fibrous streams ... in the plane of the disk."
The Specification sheds light on the meaning of the term "fibrous
streams":
The rotation speed of the spin disk 10 propels the spinning
solution along flat surface 11 and past the forward surface
discharge edge 12 to form separate fibrous streams, which are
thrown off the discharge edge by centrifugal force.
Spec. 4. From the quoted portion of the Specification, it is apparent that
"fibrous streams" are formed after the spinning solution is propelled past the
discharge edge, not on the disk itself. Accordingly, the Examiner need not
assert that the division of the polymer flow into separate channels occurs
prior to separation from the disk. Rather, the Examiner need only show that
the fibrous streams are formed in the plane of the disk. The Board accepts
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the Examiner's finding that Snowden '783 "provides a flat surface and a
discharge edge at the circumference and in the plane," Answer 3, and that, as
a consequence, the fibrous streams of Snowden '783 are formed in the plane
of the spin disk.
Claims 17-21
Appellant's final argument is that claims 17-21 depend from claim 1
and that the Examiner has failed to make out a prima facie case for the same
reasons as stated in regard to claim 1. This argument fails for the reasons set
forth above.
CONCLUSION
We affirm the rejections of claims 1-8 and 10-26 of Application
12/335,816 under 35 U.S.C. § 103(a) as obvious.
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
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