Ex Parte Kinloch et al

Patent Trial and Appeal Board

Apr 10, 2018

13522604 (P.T.A.B. Apr. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/522,604 07/17/2012
23517 7590 04/12/2018
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA A VENUE, N.W.
WASHINGTON, DC 20004
FIRST NAMED INVENTOR
Ian Anthony Kinloch
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.
HGF-00417312212001 1774
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
04/12/2018 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):
kcatalano@morganlewis.com
patents@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN ANTHONY KINLOCH,
ROBERT JOSEPH YOUNG, and
KONSLANTIN SERGEEVICH NOVOSELOV
Appeal2017-006941
Application 13/522,604
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
JANEE. INGLESE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision to reject claims 1, 6, 9, 10, 14--16, and 18-36.
1 In this decision, we refer to the Specification filed July 17, 2012 ("Spec."),
the Final Office Action entered May 25, 2016 ("Final Act."), the Appeal
Brief filed November 10, 2016 ("App. Br."), the Examiner's Answer entered
February 1, 2017 ("Ans."), and the Reply Brief filed March 29, 2017
("Reply Br.").
2 Appellants identify The University of Manchester as the real party in
interest. App. Br. 2.
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We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to nanocomposite material
comprising a substrate in which graphene is distributed and the graphene has
not been previously chemically modified (i.e., pristine graphene ). Spec.
3:15-16, 5:36-37. According to the Specification, graphene is one of the
stiffest known materials and an ideal candidate for use as a reinforcement in
high-performance composites, but it has not been possible to produce
polymer composites without chemical modification of the graphene (i.e.,
functionalized graphene, e.g., graphene oxide). Id. at 1:6-7, 1:33-34, 6: 1-2.
Claim 1 is illustrative (disputed matter italicized):
1. A nanocomposite material comprising:
a polymer substrate; and
a plurality of discontinuous graphene flakes distributed
throughout the polymer substrate, the graphene flakes each
having a length greater than 10 µm,
wherein the graphene flakes have not been chemically
modified.
App. Br. 15 (Claims Appendix).
The Examiner maintains the following rejections:
1. Claims 1, 6, 9, 10, 14--16, and 18-36 stand rejected under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.
2. Claims 1, 19-21, and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Geim. 3
3 A. K. Geim et al., The rise of graphene, 6 NATURE MATERIALS 183
(2007) ("Geim").
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3. Claims 1, 6, 9, 10, 14--16, and 18-36 stand rejected over Geim in
view of Prud 'homme. 4
Ans. 2; Final Act. 2--4.
OPINION
Rejection 1: Written Description
The Examiner determines that claims 1, 6, 9, 10, 14--16, and 18-36
are unpatentable under 35 U.S.C. § 112, first paragraph, because they lack
written description support in the Specification for the limitation that the
length of the graphene or functionalized graphene is greater than 10 microns,
greater than 30 microns, or greater than 50 microns in the embodiment
where the graphene flakes are distributed through the polymer substrate.
Final Act. 2. The Examiner finds that the lengths recited in the Specification
are in conjunction with the embodiment where the graphene is present on the
surface of the substrate. Id.
Appellants contend that the Examiner erred because page 3 of the
Specification states that the nanocomposite material may be "in the form of
a substrate in which the graphene or functionalized graphene is distributed"
without limitations related to any particular flake length. App. Br. 5 (citing
Spec. 3:15-16). Appellants argue that the proximity of the recited flake
lengths to any particular embodiment does not limit their generalized
applicability in view of distributed embedded flakes appearing both before
and after the disclosure of flake length and in view of the multi-paragraph
passage relating to many different embodiments on pages 3 through 5 of the
Specification. Id. at 6. In addition, Appellants contend that the disclosure
4 Prud'homme et al., WO 2008/045778 Al, pub. Apr. 17, 2008
("Prud'homme").
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on page 25 of the Specification regarding graphene flakes reinforcing a
composite matrix describes flake length as an important consideration in a
matrix and not limited to an embodiment where graphene is adhered to a
substrate. Id. at 6-7 (citing Spec. 25:12-14, 25:2-22).
The Examiner responds that the rejection is not with respect to
support for the limitation that the flakes are distributed within a substrate,
but, rather, that there is no support for the specific flake lengths for that
embodiment. Ans. 2. The Examiner notes that neither flake length nor
graphene in flake form is disclosed at page 3, lines 15-16, of the
Specification. Id. at 2-3. The Examiner further finds that the disclosures on
pages 11-14 and page 25 of the Specification are directed to the
embodiment with a single monolayer flake placed on the surface and then
coated with an upper layer and similar to prior art that Appellants
distinguished as not equivalent or exemplifying multiple flakes distributed
throughout the polymer matrix. Id. at 3--4.
In the Reply Brief, Appellants contend that "the Examiner may be
confusing the detailed modeling and stress-transfer study described in the
[S]pecification with the range of inventive embodiments." Reply Br. 3
(citing Spec. 2:30-34). Appellants assert that they "have utilized a single-
flake model to inform generalized discussions of a wide variety of different
embodiments disclosed in the [S]pecification." Id. at 4 (citing Spec. 10:32-
35). Appellants further argue that the large-scale applications disclosed in
the Specification, such as bridges, buildings, aircrafts, and other large
structures, would utilize more than the single graphene flake of the atomic-
scale study and modeling. Id. at 4 (citing Spec. 3:31-34, 4:32, 6:30-31,
8:28-32, 10:12-15).
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We are persuaded by Appellants that the Examiner erred in narrowly
reading the disclosures concerning flake size to be limited to a particular
embodiment in the Specification. We agree with Appellants that the
Specification characterizes the single-flake study as a model that informs the
various embodiments disclosed in the Specification. As the Examiner notes
(Ans. 2), the Specification clearly discloses that flakes are distributed within
a substrate as well as flakes having the claimed sizes. The Specification also
refers to several aspects or embodiments by beginning multiple sentences
with "in an embodiment." See, e.g., Spec. 3-10. It is in this portion of the
Specification where a variety of graphene lengths appear including the
lengths recited in the claims. Before this section of the Specification is the
disclosure of the Raman spectroscopy study to characterize the structure and
deformation of graphene to which Appellants direct us. Spec. 2: 14--15.
After this section of the Specification is the disclosure that the studied
properties of the graphene polymer composite assist in determining
appropriate end uses as well as examples that Appellants direct us to as
evidence that flake length is a consideration related to the stress study.
Reply Br. 4; App. Br. 6-7; Spec. 10:32-35, 14: 19-21, 25: 19-22. Therefore,
the Specification as a whole supports Appellants' position that the property
of length of the graphene flakes in the composite was in Appellants'
possession for the multiple embodiments disclosed therein.
We appreciate that the claimed subject matter does not appear
together in one paragraph of the Specification. However, the claimed
subject matter need not be described "in haec verba" in the original
specification in order to satisfy the written description requirement. In re
Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). Rather, "the test ... is whether
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a person of ordinary skill in the art would recognize that the applicant
possessed what is claimed in the later filed application as of the filing date of
the earlier filed application." Noelle v. Lederman, 355 F.3d 1343, 1348
(Fed. Cir. 2004). Based on the cited record in this Appeal, we agree with
Appellants that a person of ordinary skill in the art would recognize that
Appellants possessed the claimed aspect of the flakes of the recited length in
the composite. Accordingly, we reverse the Examiner's rejection of claims
1, 6, 9, 10, 14--16, and 18-36 as unpatentable under 35 U.S.C. § 112, first
paragraph.
Rejection 2: Obviousness over Geim
The Examiner finds that claims 1, 19-21, and 32 are unpatentable
under 35 U.S.C. § 103(a) over Geim for the reasons stated on page 3 of the
Final Office Action.
Appellants argue the claims as a group. App. Br. 8-11. In
accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 19-21 and 32 will stand
or fall together with independent claim 1.
Appellants argue that the Examiner erred in rejecting claim 1 because
Geim does not teach a nanocomposite comprising graphene flakes having
the attributes of "a length greater than 10 µm" and "not ... chemically
modified" as recited in the claim. App. Br. 8. According to Appellants,
Geim's disclosure of graphene crystallites up to 100 µmin size refers to
large graphene sheets that are not encompassed by the claim. Id. Appellants
further contend that Geim' s disclosure of "micrometer-size crystallites" are
smaller than the graphene flakes required by the claims. Id. at 9. Appellants
additionally assert that Geim' s disclosure of graphene used to form
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composite material refers to the work reported in Stankovich, 5 which
explicitly teaches that the enabled structures used chemically modified
graphene sheets. Id. at 9--10 (citing Stankovich 282).
The Examiner responds that the teachings of Geim are not limited to
the functionalized graphene disclosed by Stankovich, but, rather, encompass
the pristine graphene taught by Geim as the flakes in a composite which is
also disclosed by Geim. Ans. 5. The Examiner further responds that Geim's
disclosure that "[ t ]he most immediate application for graphene is probably
its use in composite materials" evidences that Geim does not suggest the use
of graphene in a composite is futile. Id. at 6. The Examiner further finds
that Geim' s disclosure of micrometer-sized crystallites is a length scale
indicating measurement is in microns as opposed to, for example,
nanometers, and such a scale would not lead away from longer flakes. Id.
In the Reply Brief, Appellants maintain that "Geim teaches against the
use of chemically unmodified graphene" for composite applications because
Geim discloses that graphene crystallites are difficult to locate and "hunting
for crystallites with a microscope is the very antithesis of mass production."
Reply Br. 5 (citing Geim 185, "The Art of Graphite Drawing," second
paragraph). Appellants contend that "when contemplating fabrication of
composites, Geim specifically refers only to the work of Stankovich, which
explicitly teaches that the structures mentioned by Geim are enabled only via
the use of 'chemically modified graphene sheets'" which Appellants assert
are not encompassed by the claim. Id. at 6 (citing Stankovich 282, left
column, abstract).
5 S. Stankovich et al., Graphene-based composite materials, 442 NATURE
282 (2006) ("Stankovich").
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We are not persuaded by Appellants' arguments that the Examiner
reversibly erred in rejecting claim 1under35 U.S.C. § 103(a). Appellants
do not dispute the Examiner's finding that Geim discloses pristine graphene
flakes (Final Act. 3; Ans. 5) and that Geim teaches ways of making non-
functionalized large graphene sheets (Ans. 5). The Examiner's finding is
supported by the evidence as Geim discloses not only mechanical cleaving
to produce graphene (Geim 185, left side, second paragraph), but also
evidences epitaxial growth of graphene (Geim 190, left side, second
paragraph), which are the same methods disclosed in Appellants'
Specification for producing graphene (Spec. 7: 11-13).
Nor do Appellants dispute the Examiner's finding that Geim discloses
"[t]he most immediate application for graphene is probably its use in
composite materials" (Ans. 6) which is also supported by the record (Geim
190, left side, fourth paragraph). We agree with the Examiner that Geim
cannot be said to teach away from composites with graphene as Appellants
assert in view of this statement. Ans. 6. A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). This statement in Geim does not
discourage, but, rather, espouses composites of graphene as an application.
As such, Geim's disclosure stands on its own and is not dependent on, nor
limited by, Stankovich.
Regarding the size of Geim's graphene flakes, we are not persuaded
by Appellants' argument that Geim's disclosures of "graphene crystallites up
to 100 µm" and "micrometer-size crystallites" fail to suggest the claimed
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length of greater than 10 µm. Appellants' argument is unpersuasive not only
because Geim as a whole discloses the same size scale, but because Geim
also discloses the same methods for producing graphene flakes as disclosed
in the Appellants' Specification as discussed above. Moreover, in a
determination of obviousness, "the 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." KSR Int'!. Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006)).
To the extent that Appellants argue that Geim's disclosures of
graphene and graphene composites are experimental rather than commercial
scale, such arguments are not persuasive of patentability because limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671F.2d1344, 1348 (CCPA 1982).
In sum, we affirm the Examiner's rejection of claim 1 as obvious over
Geim.
Rejection 3: Obviousness over Geim and Prud'hommme
The Examiner finds that claims 1, 6, 9, 10, 14--16, and 18-36 are
unpatentable under 35 U.S.C. § 103(a) over Geim in view of Prud'homme
for the reasons stated on pages 3-6 of the Final Office Action.
Appellants argue the claims as a group. App. Br. 8-11. In
accordance with 37 C.F.R. § 41.37(c)(l)(iv), claims 6, 9, 10, 14--16, and 18-
36 will stand or fall together with independent claim 1.
Appellants argue that the Examiner erred in rejecting claim 1 over the
cited art because both Geim and Prud'Homme teach against the use of
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graphene that has not been chemically modified. App. Br. 11. According to
Appellants, their position is supported by the statement in Geim "it seems
doubtful that such composites can match the mechanical strength of their
nanotube counterparts because of much stronger entanglement in the latter
case." Id. Appellants interpret this disclosure as causing a person of
ordinary skill in the art to "not optimize graphene for reinforcement of
plastics when Geim teaches that such an effort would be futile." Id.
Appellants further contend that "Geim (via Stankovich)" teaches that
chemical modification of graphene "is required for mixture with the organic
polymers of Geim's composites" and that "Geim itself, via Stankovich,
teaches against their use in composites in the absence of chemical
modification" even if Geim's graphene crystallites are up to 100 µmin size.
Id. at 11-12 (citing Geim 190, Stankovich 282).
Appellants assert that Prud'homme "teaches against the use of
chemically unmodified graphene" with its exemplified reduced graphene
oxide because it "clearly teaches the necessity of chemical modification via
oxidation in order to produce suitable material." Id. at 12 (citing
Prud'homme 8, 34). Appellants argue that a skilled artisan considering
Prud'homme's teachings "would be led away from the use of chemically
unmodified graphene flakes" for the claimed application. Id. at 13.
The Examiner responds that "the rejection was not to replace the
graphene of Prud'hmme with that of Geim, but rather to teach methods of
combining graphene and polymers taught by Prud'homme in order to
produce the composites already disclosed by Geim using the graphene
disclosed by Geim." Ans. 5, 7. Regarding Geim, the Examiner responds
that the teachings of Geim are not limited to the functionalized graphene
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disclosed by Stankovich, but, rather, encompass the pristine graphene taught
by Geim as the flakes in a composite which is also disclosed by Geim. Id.
Regarding nanotubes providing greater strength than graphene, the Examiner
finds that "there can be more benefits of graphene than just strength" and
that Geim teaches that graphene has the benefit of being cheaper to produce
that nanotubes. Id. at 6 (citing Geim 190). The Examiner further responds
that Geim does not state that the flakes have a size of one micron nor does
Geim disclose longer flakes having less strength. Therefore Geim does not
teach away from longer flakes. Id. The Examiner also finds that Geim does
not teach the use of graphene in a composite is futile in view of the strength
of nanotubes, only that nanotubes likely have more mechanical strength. Id.
In the Reply Brief, Appellants maintain that Prud'homme is limited to
the use of chemically modified material and would lead away from the use
of chemically unmodified graphene flakes for the claimed application.
Reply Br. 7. Appellants further argue that Geim's disclosure of laboratory-
scale isolation of graphene crystallites from graphite "appear to be
unsuitable for applications other than laboratory study." Id. at 8. Because
Geim's production technique was available at the time of Stankovich and the
references "teach against the use of such graphene," Appellants assert that
"the conventional wisdom in the art required the use of chemically modified
materials in applications such as composites." Id.
We are not persuaded by Appellants' arguments that the Examiner
reversibly erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Geim,
Stankovich, and Prud'homme do not teach away from the use of unmodified
graphene flakes in a composite. As discussed above in connection with
Rejection 2 over Geim alone, a prior art reference teaches away if it
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"criticize [ s], discredit[ s], or otherwise discourage [ s] the solution claimed."
In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). At most, Stankovich
and Prud'homme evidence that composites can be made with chemically
modified graphene. Appellants do not dispute the Examiner's finding that
Geim discloses unmodified graphene flakes. Appellants have not directed us
to any evidence that Geim discourages or criticizes the use of unmodified
graphene in a composite to support their position that Geim teaches away
from such an application of unmodified graphene. We find the Examiner's
position is supported by the preponderance of the evidence cited in this
appeal record, especially Geim's encouragement of using graphene in the
claimed application where it is stated "[ t ]he most immediate application for
graphene is probably its use in composite materials." Geim 190.
To the extent that Appellants contend that Geim does not enable a
composite of unmodified graphene in a composite, that argument fails
because Appellants have not directed us to evidence indicating that the
incorporation of unmodified graphene into a composite would have required
undue experimentation. In re Antor Media Corp., 689 F.3d 1282, 1288
(Fed. Cir. 2012) ("[A] prior art printed publication cited by an examiner is
presumptively enabling barring any showing to the contrary by a patent
applicant or patentee.").
We also find Appellants' arguments directed to the flake sizes
disclosed by Geim and laboratory scale production disclosed by Geim to be
unpersuasive for the same reasons discussed above in connection with
Rejection 2.
In sum, we affirm the Examiner's rejection of claim 1 as obvious over
Geim and Prud'homme.
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Conclusion
For the above reasons, we reverse the Examiner's rejection of claims
1, 6, 9, 10, 14--16, and 18-36 under 35 U.S.C. § 112, first paragraph, and we
affirm the Examiner's rejections under 35 U.S.C. § 103 of claims 1, 6, 9, 10,
14--16, and 18-36.
DECISION
The Examiner's decision 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)(l ).
AFFIRMED
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