Ex Parte Kim et al

Patent Trial and Appeal Board

Jul 5, 2016

13442026 (P.T.A.B. Jul. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/442,026 04/09/2012
89980 7590 07/07/2016
NSIPLAW
P.O. Box 65745
Washington, DC 20035
FIRST NAMED INVENTOR
Tae-sung KIM
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.
042088.0003 1063
EXAMINER
DECENZO, SHAWN H
ART UNIT PAPER NUMBER
2877
NOTIFICATION DATE DELIVERY MODE
07/07/2016 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@nsiplaw.com
pto.nsip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TAE-SUNG KIM, ATUL KULKARNI, JAEBOONG CHOI,
HYEONG KEUN KIM, YOUNG JIN KIM, and BYUNG HEE HONG 1
Appeal2015-000641
Application 13/442,026
Technology Center 2800
Before BRADLEY R. GARRIS, PETER F. KRATZ, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1 and 3-20. We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.
1 Research & Business Foundation Sungkyunkwan University is identified
as the real party in interest. App. Br. 2.
Appeal2015-000641
Application 13/442,026
Appellants claim an optic fiber comprising a carbon nano-structure
layer formed on a core thereof, wherein the carbon nano-structure layer
comprises graphene (independent claim 1 ). Appellants also claim a method
of making such an optic fiber (remaining independent claims 11 and 20).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An optic fiber, comprising a carbon nano-structure layer formed
on a core at a predetermined locus of the optic fiber, wherein the
carbon nano-structure layer comprises graphene.
App. Br. 17.
Under 35 U.S.C. § 102(b), the Examiner rejects claims 1, 6, 11, and
19 as anticipated by Song (Single-walled carbon nanotubesfor high-energy
optical pulse formation, AM INST. PHYS. 92 (2008)) (as evidenced by
Yoshizawa (US 2003/0044608 Al, published Mar. 6, 2003)).
Under 35 U.S.C. § 103(a), the Examiner rejects independent claims 1,
11, and 20 as unpatentable over Jorgenson (US 5,359,681, issued Oct. 25,
1994) in view of Song (as evidenced by Yoshizawa) and rejects remaining
dependent claims 3-10 and 12-19 as unpatentable over these references
alone or in combination with additional prior art references.
Appellants do not present additional, separate arguments specifically
directed to the dependent claims under rejection (App. Br. 4--15). Therefore,
the dependent claims will stand or fall with their parent independent claims
of which claim 1 is representative.
For the reasons expressed in the Final Action, the Answer, and below,
we agree with the Examiner's finding that Song discloses an optic fiber
having a single-walled carbon nanotube on the core thereof and that Song's
single-walled carbon nanotube comprises graphene as evidenced by
2
Appeal2015-000641
Application 13/442,026
Yoshizawa in accordance with the requirements of claim 1 (see, e.g., Final
Action 4). 2
Appellants argue that the graphene of claim 1 and the single-walled
carbon nanotubes of Song are different and, as support for this argument,
rely on a previously submitted reference entitled Carbon - The Wonder
Element (see, e.g., App. Br. 6-10). Specifically, Appellants argue that
"graphene has planar configuration" (id. at 9) and that "[ n Jo person of
ordinary skill[] in the art would have mistaken Song's vertically aligned
single-walled carbon nanotubes (SWNTs) as sheets of graphene" (id.).
Appellants similarly argue that "the broadest reasonable interpretation
imposed during prosecution does not allow treating Song's 'single-walled
nanotubes (SWNTs)' as an equivalent of the recited 'graphene"' (id. at 8).
Appellants' arguments are not persuasive. As correctly explained by
the Examiner, Carbon- The Wonder Element militates for the Examiner's
finding that Song's single-walled carbon nanotubes comprise graphene as
claimed and against Appellants' contrary position (Ans. 3). The Examiner
also correctly explains that claim 1 does not require the recited graphene to
have a planar form (id. at 5) and that the broadest reasonable interpretation
leads to construing the claim as encompassing the single-walled carbon
nanotubes of Song (id. at 6-7). We emphasize that the Examiner's
interpretation of claim 1 is well supported by the "curved surface" limitation
2 In the Response to Argument section of the Answer, the Examiner cites
and discusses new references not presented in the Final Action (i.e., the
Dresselhaus et al., Geim et al., and Marrucci et al. references) (Ans. 3-10).
These new references are not timely presented and inappropriately raise new
prosecution issues in the appeal forum. Accordingly, we have not
considered these new references in our analysis of the rejections on appeal.
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Appeal2015-000641
Application 13/442,026
of dependent claim 6 and by Appellants' Figure 3 disclosure of an optic fiber
comprising a carbon nano-structure layer of graphene having a cylindrical
form (see, e.g., Spec. i-fi-154--55, Fig. 3(h)) corresponding to the cylindrical
form of Song's single-walled carbon nanotubes.
For the reasons given by the Examiner and above, Appellants fail to
show error in the Examiner's finding that representative claim 1 is
anticipated by Song. We sustain, therefore, the § 102 rejection of claims 1,
6, 11, and 19 based on Song.
Concerning the§ 103 rejections, Appellants argue that Jorgenson and
the other applied references "fail to cure the deficiencies of Song" (App. Br.
14).
Because Song has no deficiencies with respect to anticipating
representative claim 1, we also sustain the § 103 rejections of this claim and
of remaining claims 3-20.
The decision of the Examiner 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).
AFFIRMED
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