Ex Parte Kalyanaraman et al

Patent Trial and Appeal Board

Mar 31, 2016

13072559 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/072,559 03/25/2011
77176 7590 04/04/2016
Novak Drnce Connolly Bove+ Quigg LLP
Novak Drnce LLP
1875 Eye Street
Eleventh Floor
Washington, DC 20006
FIRST NAMED INVENTOR
Viswanathan Kalyanaraman
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.
18786.0017 .USOOOO 6251
EXAMINER
ZEMEL, IRINA SOPJIA
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
tom.pavelko@novakdrnce.com
DCDocket@novakdrnce.com
re nee.tisdale@novakdrnce.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VISW ANATHAN KAL Y ANARAMAN and WILLIAM E. HOLLAR1
Appeal2014-006146
Application 13/072,559
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
LINDA M.GAUDETTE, 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 rejection2 of claims 19-24 and 27-31 3, which are all of the claims
1 The Real Party in Interest is said to be SABIC Innovative Plastics IP B.V., a
corporation formed under the laws of The Netherlands. Appeal Brief filed January
13, 2014 ("App. Br.") at 2.
2 Non-Final Action entered February 6, 2013 ("Non-Final Act.") at 2-5; Final
Action entered June 11, 2013("Final Act.") at 2--4, Advisory Action entered
September 19, 2013 ("Advisory Act.") at 1-2 and the Examiner's Answer entered
February 26, 2014 ("Ans.") at 2-6.
3 Claims 25 and 26 were cancelled after the Final Office Action. See the
Amendment filed September 11, 2013 and Advisory Action entered September 19,
2013.
Appeal2014-006146
Application 13/072,559
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
The subject matter on appeal is directed to "[fluffy and porous] polyimide
particles and powders, which dissolve rapidly in solvents and in polymers, such as
epoxy .... " Spec. 1, 11. 5-8 and 2, 11. 5-8. These polyimide particles with fluffy
and porous structure are said to be prepared by mixing a solution containing an
organic solvent and polyimide with water at a high shear rate, without any
surfactant, or mixing a solution containing an organic solvent and polyimide with
steam in several smaller parallel tubes forming a jet, without any surfactant. Spec.
2, 11. 9-30. Figures 6 and 7, which define the fluffy and porous structure of the
polyimide particles, are reproduced below:
See Spec. 2, 11. 20-21 and 29-30. These fluffy and porous polyimide particles or
powders are said to have a faster dissolution rate than those produced by
conventional cryo-grinding, jetmilling processes, emulsion processes, and
mechanical grinding processes. Spec. 1, 1. 28-2, 1. 6 and Examples 3-8 at Spec.
29-32. Figures 3, 4, and 5, which illustrate the non-fluffy polyimide particles
produced by conventional jetmilling, emulsion, and mechanical grinding processes,
are reproduced below:
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Appeal2014-006146
Application 13/072,559
These non-fluffy porous polyimide particles, unlike the fluffy porous polyimide
particles, have dissolution rates of greater than 5 hours in epoxy at 120°C.
Examples 3-8 at Spec. 29-32.
Details of the appealed subject matter are recited in representative claims 19,
24, and 29 which are reproduced below from the Claims Appendix of the Appeal
Brief:
19. A porous powder comprising at least one polyimide porous
particle,
wherein the shape of the particle is a fluflj;, non-spherical
shape of a size in the range of 75 to 5,000 microns; and
wherein the pore volume of the particle is from greater than or
equal to 0.01 to 0.10 cc/g.
24. A composition comprising a porous powder of
polyetherimide, wherein the powder comprises at least one particle,
wherein the particle has a size of from 200-800 microns having a
fluflj;, non-spherical shape, and wherein the composition dissolves in
epoxy in less than 5 hours.
29. A porous powder comprising polyimide,
wherein the porous powder comprises at least one particle
having ajluflj;, non-sherical [sic] shape in a size in the range of 75 to
5, 000 microns; and
wherein the pore volume of the porous powder is from greater
than 0.01 to 0.10 cc/g,
wherein the pore size of the porous powder is from more than
237 to 1500 Angstroms,
and
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Appeal2014-006146
Application 13/072,559
wherein the BET Surface area of the porous powder is from
more than 2.3 to 10 m2/g.
App. Br. 10 (emphasis added).
Appellants seek review of the following grounds of rejection maintained by
the Examiner:
1. Claims 19-24 and 27-29 under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative under 35 U.S.C. § 103(a) as obvious over the disclosure of US
2006/0039984 Al published in the name of Nakanishi et al. on February 23, 2006
("Nakanishi");
2. Claims 19-24 and 27-31 4 under 35 U.S.C. § 102(b) as anticipated by,
or in the alternative under 35 U.S.C. § 103(a) as obvious over, US 5,422,034
issued to Hirai et al. on June 6, 1995 ("Hirai"); and
3. Claims 19-24 and 27-31 5 under 35 U.S.C. § 103(a) as obvious over
JP 07-300524 A published in the name of Tashiro et al. on November 14, 1995
("Hitachi"6). App. Br. 3; see also Non-Final Act. 2-5, Final Act. 2--4, Advisory
Act. 1-2, and Ans. 2-6.
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
the Examiner has not demonstrated that Nakanishi, Hirai, or Hitachi teaches or
4 Although the Examiner has rejected claims 19-31 based on Hirai, we remove
claims 25 and 26 from this rejection because they were cancelled subsequent to the
Final Action and are no longer pending as indicated supra.
5 Although the Examiner has rejected claims 19-25 and 27-31 based on Hitachi,
we remove claim 25 from this rejection because it was cancelled.
6 The Examiner identifies this Japanese Patent Application publication by its
assignee "Hitachi". Ans. 4.
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Appeal2014-006146
Application 13/072,559
would have suggested at least one polyimide particle having a "fluffy, non-
spherical" structure as recited in the claims on appeal for the reasons set forth in
the Appeal Brief. In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining
that while "the applicant must identify to the Board what the examiner did wrong .
. . the examiner retains the burden to show invalidity"). As correctly explained by
Appellants, the term "fluffy" non-spherical, porous structure recited in the
appealed claims is defined by Figures 6 and 7 of the above-identified application as
indicated at page 2 of the Specification. App. Br. 4. Moreover, by virtue of
disclosing polyimide particles having a fluffy and porous structure as an
improvement over the conventional porous polyimides having spherical or almost
spherical structures produced by jetmilling, emulsion, and mechanical grinding
processes, the Specification expressly or impliedly excludes those porous
polyimide or polyetherimide particles having spherical or almost spherical
structures, inclusive of those shown in Nakanishi, Hirai, or Hitachi, from the
claimed polyimide particles having fluffy, non-spherical porous structure shown in
Figures 6 and 7 of the above-identified application. In re Baker Hughes, Inc., 215
F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that is
"beyond that which was reasonable in light of the totality of the written
description" in the specification); In re Fout, 675 F.2d 297, 300 (CCPA 1982)
("Claims must always be read in light of the specification. Here the specification
makes plain what the appellants did and did not invent. ... "); Phillips v. AWH
Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en bane) ("the specification is 'the
single best guide to the meaning of a disputed term,' and that the specification 'acts
as a dictionary when it expressly defines terms used in the claims or when it
defines term by implication"').
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Appeal2014-006146
Application 13/072,559
Accordingly, we reverse the Examiner's rejections of claims 19-24 and 27-
31 under 35 U.S.C. §§ 102(b) and 103(a).
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 19-24
and 27-31 is REVERSED.
REVERSED
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