Ex Parte Johnson

Patent Trial and Appeal Board

May 23, 2016

13548302 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/548,302 07 /13/2012 Michael H. Johnson
44639 7590 05/25/2016
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
TYI4-52838-US
(BA00905US)
CONFIRMATION NO.
7626
EXAMINER
GULAKOWSKI, RANDY P
ART UNIT PAPER NUMBER
1766
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL H. JOHNSON1
Appeal2014-004534
Application 13/548,302
Technology Center 1700
Before ROMULO H. DELMENDO, SALLY GARDNER LANE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Baker Hughes
Incorporated. App Br. 2.
2 In our opinion below, we refer to the Specification filed July 13, 2012
("Spec."), Final Action mailed Aug. 12, 2013 ("Final Act."), the Appeal
Brief filed Oct. 8, 2013 ("App. Br."), and the Examiner's Answer mailed
Nov. 18, 2013 ("Ans.").
Appeal2014-004534
Application 13/548,302
The Invention
The claims are directed to mixed metal-polymer composites. Claims
1 and 4, reproduced below, are illustrative of the claimed subject matter:
1. A metal-polymer composite comprising:
a crosslinked polymer; and
a metal which is removably disposed among the crosslinked
polymer.
4. The metal-polymer composite of claim 1, wherein the
crosslinked polymer is a crosslinked product of a polymer including
polyphenylene sulfide, polyphenylsulfone, self-reinforced
polyphenylene, polysulfone, polyethersulfone, polyarylsulfone,
derivatives thereof, or a combination comprising at least one of the
foregoing.
Penneck et al.
("P enneck")
Yoshitani et al.
The References
us 4,470,898
us 5,314,912
Ota et al. ("Ota") US 2003/0055179 Al
Hoek et al. ("Hoek") US 2010/0224555 Al
Mori et al. ("Mori") US 2011/0104505 A 1
The Rejections
Sept. 11, 1984
May 24, 1994
Mar. 20, 2003
Sept. 9, 2010
May 5, 2011
Claims 4--8 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over each of Penneck, Y oshitani, Ota, Hoek, and Mori.
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Appeal2014-004534
Application 13/548,302
OPINION
Rejection under 35 U.S.C. § 112, second paragraph
Claim 4, and claims 5-8 that depend from it, stand rejected under
section 112, second paragraph, as indefinite for the use of the phrase
"derivatives thereof' in relation to polysulfone and polyethersulfone. Ans.
2. The Examiner contends that polysulfone and polyethersulfone have no
phenyl group, and therefore their derivatives are not defined in paragraph 23
of the Specification. Id.
Paragraph 23 reads, in part, "[i]n a non-limiting embodiment, a phenyl
group in the backbone of the polymer can be derivatized to include a
functional group." Spec. i-f 23.
But the Specification further discloses that "[t]he polymers can
further be chemically modified to include, for example, functional groups or
can be oxidized, hydrogenated, etc." Id. i-f 20. In the Specification,
Appellant also described derivatives of polysulfone and polyethersulfone
other than those in which a phenyl group is derivatized and it has not been
shown that one skilled in the relevant art would have considered such
derivatives indefinite in claims 4--8. A broad disclosure is not necessarily
indefinite. See In re Miller, 441 F .2d 689, 693 (CCP A 1971) ("[B]readth is
not to be equated with indefiniteness.").
Claims 4--8 have not been shown to be indefinite under
35 U.S.C. § 112, second paragraph, and therefore, we reverse the rejection.
Rejection under 35 U.S.C. § 103(a)
Claims 1-9 stand rejected under§ 103(a) as obvious over five
separate references. Claim 1 is the only independent claim. Appellant
argues the claims as a group, therefore claims 1-9 stand or fall together.
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Appeal2014-004534
Application 13/548,302
In the Answer, the Examiner contends that "any composition where
metal particles are dispersed in a crosslinked polymer matrix would satisfy
applicant's claims." Ans. 3. Appellant counters that this claim construction
is too broad, rendering the claim term "removably disposed among the
crosslinked polymer" meaningless. App. Br. 5.
We give claims their broadest reasonable interpretation consistent
with the specification, read in light of the specification as it would be
interpreted by one of ordinary skill in the art. See In re Bond, 910 F .2d 831,
833 (Fed. Cir. 1990). But we do not read limitations from the Specification
into the claims, as Appellant would have us do. App. Br. 5 (criticizing the
asserted prior art references as not disclosing a metal which is removably
disposed among the crosslinked polymer with any degree of specificity).
S [ }-) . 41<:;G}i1 ·~9" 140- ;l ,-,- '(-'(--,1) \ 1 '-'6Q' ''[RJ 1· ee _ n re rater~ _, r .,1..( _, j~ _ -· ~) ( , , _ 1- 9 _ ) ! .. _ eac mg a
claim in light of the specification,~ to thereby interpret limitations explicitly
recited in the claim, is a quite different thing from 'reading limitations of the
specification into a claim,' to thereby narrow the scope of the claim by
implicitly adding disclosed !imitations which have no express basis in the
claim."). Here, "removably disposed among the crosslinked polymer"
requires more than disclosure of "polymer," "crosslinking," and "metal" in
the same reference. The crosslinked polymer and metal must comprise a
composite which is physically integrated, rather than separate layers of a
structure. However, "removably disposed" does not require a prior art
reference to teach dissolution or corrosion of the metal, as disclosed in the
Specification (see, e.g., Spec. ,-r,-r 2, 3, 13, 15), because the claims themselves
do not require such dissolution or corrosion.
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Appeal2014-004534
Application 13/548,302
For prior art references that disclose or suggest a metal-polymer
composite wherein the crosslinked polymer and the metal are identical to
those disclosed in the Specification, the Examiner properly infers that the
metal is "removably disposed" in accordance with the claims, and has made
a prima facie case of obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) ("[T]he analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ."). "[T]erms [that] merely set forth
the intended use for, or a property inherent in, an otherwise old composition
... do not differentiate the claimed composition from those known in the
prior art." In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Appellant has
provided nothing more than attorney argument to distinguish the claims over
the prior art; this is inadequate to rebut a prima facie case of obviousness. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Best, 562
F.2d 1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior art
products are identical or substantially identical ... 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.").
The Specification discloses the polymers polyphenylene sulfide,
polyphenylsulfone, self-reinforced polyphenylene, polysulfone,
polyethersulfone, polyarylsulfone, and derivatives thereof, and the following
metals: aluminum, cadmium, calcium, californium, cobalt, copper,
chromium, gallium, indium, iron, magnesium, manganese, molybdenum,
nickel, palladium, tin, titanium, tungsten, silicon, silver, yttrium, zinc,
zirconium, an alloy thereof, or a combination thereof. Spec. i-fi-1 6, 14.
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Appeal2014-004534
Application 13/548,302
Y oshitani teaches a crosslinked polyphenylene sulfide resin
(Yoshitani 11 :7-9) in a composite that may further comprise the metal
aluminum (id. at 11:42-54). Contrary to Appellant's argument, the
reference need not provide motivation for one of skill in the art to select a
metal powder, such as aluminum, over other agents. See App. Br. 6. "[A]
reference must be considered not only for what it expressly teaches, but also
for what it fairly suggests." In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)
(citation omitted). Nor is Y oshitani required to teach dissolution or
corrosion of the metal out of the polymer, as these elements are not claimed.
Y oshitani' s teachings would have prompted a person having ordinary skill in
the art to formulate composites that are structurally indistinguishable from
the claimed composite. Appellant does not direct us to sufficient
comparative experimental evidence demonstrating that the claimed
composite, as recited broadly in claim 1, provides unexpected results over
the closest prior art. One of ordinary skill in the art would reasonably
conclude that the metal in Y oshitani' s composites is removably disposed if
subjected to dissolution or corrosion disclosed in the Specification.
Hoek teaches nanocomposite membranes comprised of a crosslinked
polymer such as polysulfone or polyethersulfone (Hoek i-f 26) and metal
nanoparticles including silver, copper, zinc, titanium, silicon, iron,
aluminum, zirconium, indium, tin, magnesium, or calcium or an alloy
thereof (id. i-fi-128, 44}-all metals disclosed in the Specification. Appellant
contends that Hoek provides reasons to maintain metal nanoparticles in the
membrane, therefore teaches away from a metal which is removably
disposed among the crosslinked polymer. App. Br. 7. We are not persuaded
of Appellant's position. The claims require a metal-polymer composite,
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Appeal2014-004534
Application 13/548,302
which Hoek teaches. Both the composite taught by Hoek and the composite
claimed are operative only when the metal has not been dissolved or
corroded out of the polymer, but this is not evidence that the metal in Hoek's
composite cannot be removed by dissolution or corrosion.
For the reasons above, Appellant has not identified reversible error in
the Examiner's rejection of claims 1-9 as obvious over either Y oshitani or
Hoek. We affirm the rejection in view of either reference.
Mori teaches crosslinking polyphenylene sulfide or polyethersulfone
and blending them with a metal powder or metal fibers. Mori i-f 55.
However, Mori does not teach any metal powder disclosed in the
Specification. To the extent that specific metals are taught in Mori, the
metals are used as boards to which the composite is laminated, not as a metal
which is removably disposed "among" the crosslinked polymer. See, e.g.,
id. ,-r,-r 167, 191, 212, 231, 246.
Neither Penneck nor Ota has been shown to teach any of the
polymers disclosed in the Specification.
Therefore, the Examiner fails to make a prima face case that any of
Mori, Penneck, or Ota renders the claims obvious.
DECISION
The Examiner's rejection of claims 4--8 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's rejection of claims 1-9 under 35 U.S.C. § 103(a) as
obvious over Mori, Penneck, or Ota is reversed. The rejection of the claims
as obvious over either Y oshitani or Hoek is affirmed.
It is ordered that the Examiner's decision is AFFIRMED.
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Appeal2014-004534
Application 13/548,302
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
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