12093955 (P.T.A.B. Jun. 21, 2016)

Ex Parte Kauppinen et al

Patent Trial and Appeal BoardJun 21, 2016

12093955 (P.T.A.B. Jun. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/093,955 09/20/2008 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 06/23/2016 FIRST NAMED INVENTOR Esko I. Kauppinen 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. 3505-1032 7559 EXAMINER MANGOHIG, THOMAS A ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 06/23/2016 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ESKO I. KAUPPINEN, HUA JIANG, DAVID P. BROWN and ALBERT G. NASIBULIN Appeal2014-002734 Application 12/093,955 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH and BRIAND. RANGE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 30-37 and 54--57. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The Appellants claim a fullerene functionalized tubular carbon nanotube. Claim 30 is illustrative: 30. A fullerene functionalized tubular carbon nanotube, comprising: Appeal2014-002734 Application 12/093,955 Ohta one or more individual fullerenes and/or individual fullerene based molecules bonded to the tubular carbon nanotube, wherein the tubular carbon nanotube has two ends and a side, and the bond between said fullerenes and/ or fullerene based molecules and said carbon nanotube is covalent and the bond is formed on the side of said tubular carbon nanotube. The References us 5,489,477 Feb. 6, 1996 Xianglong Li et al., C6o modified single-walled carbon nanotubes, 377 CHEM. PHYS. LETTERS 32-36 (2003) (hereinafter Li). The Rejections The claims stand rejected as follows: claims 30-37 and 54--57 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention, claims 30-36 and 57 under 35 U.S.C. Â§ 102(b) over Li, and claims 30-37 and 54--57 under 35 U.S.C. Â§ 102(b) over Ohta. OPINION We affirm the rejection over Li and reverse the other rejections. Rejection under 35 US.C. Â§ 112, second paragraph "[T]he indefiniteness inquiry asks whether the claims 'circumscribe a particular area with a reasonable degree of precision and particularity."' Marley Mouldings Ltd. v. Mikron Indus. Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005) (quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)). The Examiner asserts that in claims 30 and 57 "the tubular carbon nanotube has two ends and a side" is indefinite because "although carbon nanotubes may have ends and sides, Appellant has not provided by 2 Appeal2014-002734 Application 12/093,955 definition, in the specification as filed, a showing of what parts of the carbon nanotubes are considered the ends and side" (Ans. 2). The Appellants illustrate tubular carbon nanotubes which appear to have two ends and a side (Figs. 1 a, 16a-e ). The Examiner has not established that definitions of "ends" and "side" are needed for those terms to circumscribe a particular area with a reasonable degree of precision and particularity. Thus, we reverse the rejection under 35 U.S.C. Â§ 112, second paragraph. Rejection under 35 USCÂ§ 102(b) over Li The Appellants argue the claims as a group (App. Br. 6-13). We therefore limit our discussion to one claim, i.e., claim 30. Claims 31-36 and 57 stand or fall with that claim. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2012). Li discloses individual fullerenes (C60) covalently bonded to single-walled carbon nanotubes (SWNTs) (pp. 33, 35 (Scheme 1, middle illustration)). The fullerene-modified Sw1-.JTs are made by mechanochemical reaction wherein "[t]ypically, 5 mg of SWNTs, 25 mg of [60]fullerene, and 100 mg of potassium hydroxide were weighed into a stainless steel capsule containing a stainless steel milling ball and then vigorously shaken for 50 minutes under nitrogen atmosphere at room temperature using a commercial Wig-L-Bug (Bratt 3110-B)" (p. 33) followed by 1) washing to remove excess [60]fullerene precursor and potassium hydroxide and 2) drying (see id.). In the Appeal Brief the Appellants initially rely upon what appears to be unsupported attorney argument (App. Br. 7-10). That argument is unpersuasive due to lacking evidentiary support. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The remainder of the Appeal Brief is a 3 Appeal2014-002734 Application 12/093,955 summary of the second Kauppinen Declaration (filed Nov. 15, 2012) (App. Br. 10-13). The Appellants' Reply Brief is a summary of the Endo Declaration (filed Mar. 5, 2013) (Reply Br. 2-7). Hence, we address those two declarations. Kauppinen states that "a test sample was produced in line with the teaching of Li et al . ... from Nanocyl SWCNTs (98 % purity), fullerenes (99.95 % purity) and solid KOH (>85 %)" (p. 2). Kauppinen washes the test sample with toluene and concludes that because the toluene became purple- brown, the toluene had washed the fullerenes away from the test sample (p. 2). Kauppinen then washes the test sample with o-dichlorobenzene to completely remove any C60 oligomers and repeatedly washes it with water to completely remove potassium hydroxide (p. 3). Kauppinen compares transmission electron microscope (TEM) images of the washed test sample and untreated SWCNTs and concludes that there is no difference between the images which indicates the presence of fullerenes on the test sample's SWCNTs (p. 3-7). Kauppinen's Declaration is ineffective for establishing that Li's fullerenes are not covalently bonded to the SWNTs because: 1) Kauppinen does not establish that the conditions used to prepare the test sample are comparable to those used by Li, 2) Kauppinen does not provide TEM images of SWCNTs having fullerenes covalently bonded thereto which shows that such fullerenes are visible at the resolution of Kauppinen's TEM images, and 3) Kauppinen does not establish error in Li's interpretation of evidence relied upon by Li as showing that the fullerenes are covalently bonded to the SWNTs (pp. 33-35). Endo asserts (pp. 2-7) that Li does not provide evidence that the fullerenes are covalently bonded to the SWNTs. 4 Appeal2014-002734 Application I2/093,955 Li provides such evidence (pp. 33-35) and Endo does not establish that Li's interpretation of the evidence is erroneous. Endo asserts (pp. 2-3) that Li's Figures I and 3 indicate that Li's technique destroys a significant fraction of the SWNTs and fullerenes. Li interprets those figures as providing evidence that the fullerenes are covalently bonded to the SWNTs (pp. 33-34). Endo does not establish that Endo' s interpretation of those figures is incorrect. Endo asserts (pp. 4--5) that Li's fullerene clusters (p. 35, Scheme I, third illustration) cannot be individual fullerenes. The individual fullerenes exist before the fullerene clusters are formed (p. 35). For the above reasons the evidence relied upon by the Appellants, when considered with Li, is insufficient for indicating reversible error in the rejection. Rejection under 35 USCÂ§ 102(b) over Ohta Ohta discloses a high-molecular-weight carbon material compnsmg carbon nanotubes bonded through soccer ball-like spherical high-molecular- weight carbon material (Abstract; Fig. IA). The Examiner asserts that Ohta's soccer ball-like spherical high- molecular-weight carbon material is attached to a carbon nanotube's side (Ans. 4, I3). Ohta's soccer ball-like spherical high-molecular-weight carbon material is not attached to a carbon nanotube's side but, rather, bonds carbon nanotubes together at their ends (Abstract; Fig. IA). Accordingly, we reverse the rejection under 35 U.S.C. Â§ I02(b) over Ohta. 5 Appeal2014-002734 Application 12/093,955 DECISION/ORDER The rejection of claims 30-36 and 57 under 35 U.S.C. Â§ 102(b) over Li is affirmed. The rejections of claims 30-37 and 54--57 under 35 U.S.C. Â§ 102(b) over Ohta and claims 30-37 and 54--57 under 35 U.S.C. Â§ 112, second paragraph are reversed. It is ordered that the Examiner's decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART 6