Ex Parte Korzhenko et al

Patent Trial and Appeal Board

Nov 24, 2017

13497559 (P.T.A.B. Nov. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/497,559 04/26/2012 Alexander Korzhenko 0078840-000007 5068
21839 7590 11/28/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
BLAND, ALICIA
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
11/28/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER KORZHENKO, MICKAEL HAVEL,
and CATHERINE BLUTEAU
Appeal 2017-002032
Application 13/497,5591
Technology Center 1700
Before JEFFREY T. SMITH, AVELYN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—5, 14, and 21—23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify ARKEMA FRANCE as the real party in interest.
Appeal Brief (“Appeal Br.”) 2.
2 In our Opinion, we refer to the Non-Final Action mailed December 24,
2015 (“Non-Final Act.”); the Appeal Brief filed May 11, 2016 (“Appeal
Br.”); the Examiner’s Answer mailed September 26, 2016 (“Ans.”); and the
Reply Brief filed November 17, 2016 (“Reply Br.”).
Appeal 2017-002032
Application 13/497,559
The claims on appeal are directed to oil-based masterbatch for
manufacturing drilling fluids. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. Masterbatch comprising at least one oil and more than
3% by weight of multi-walled carbon nanotubes having from 3
to 15 sheets, a mean diameter of between 5 and 30 nm and a
specific surface area greater than 200 m2/g,
said oil being chosen from: vegetable oils having a high
content of triglycerides, consisting of esters of fatty acids and of
glycerol; synthetic oils of formula R5COOR6 in which R5
represents an aryl group or the residue of a higher, linear or
branched, fatty acid having 7 to 30 carbon atoms and R6
represents a branched or unbranched hydrocarbon chain,
possibly hydroxylated, containing 3 to 30 carbon atoms;
synthetic ethers; linear or branched, saturated or unsaturated, Cr,
to C26 fatty alcohols; mineral oils; cyclic hydrocarbons;
aromatic hydrocarbons; fluorinated oils; fluorosilicone oils; and
mixtures thereof;
wherein the masterbatch is in the form of solid granules.
Claims App’x 1.
REFERENCES
The Examiner relies on the following prior art relied in rejecting the
claims on appeal:
Lockwood et al.
(“Lockwood”)
De Gunst
Takayuki et al.
(“Takayuki”)3
US 7,449,432 B2 Nov. 11, 2008
US 2011/0121242 Al May 26, 2011
JP 2007-231219 A Sept. 13,2007
3 The Examiner and the Appellants rely on the machine translation of record.
We do the same in this decision.
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Appeal 2017-002032
Application 13/497,559
A. Peigney, et al., Specific surface area of carbon nanotubes and
bundles of carbon nanotubes, 39 Carbon 507—14, (2001) (“Peigney”)
REJECTIONS
The Examiner maintains and Appellants seek review of the rejection
under 35 U.S.C. § 103(a) of claims 1—5, 14, and 21—23 over Takayuki in
view of De Gunst and Lockwood, as evidenced by Peigney.
OPINION
The Examiner rejects all of the pending claims over Takayuki in view
of De Gunst and Lockwood, as evidenced by Peigney.4 Non-Final Act. 5.
Appellants argue the claims as a group. Appeal Br. 5—11. We select
independent claim 1 as representative of the group.
The Examiner finds that Takayuki discloses multilayer carbon nano­
tubes (encompassing the claimed range of 3 to 15 sheets) with a diameter of
10-40 nm (overlapping the claimed range of 5 to 30 nm). Non-Final Act. 5.
Based on evidence in Peigney, the Examiner finds that Takayuki’s carbon
nanotubes “implicitly embrace^” the specific surface area in claim 1. Id.
The Examiner finds that Takayuki discloses compositions comprising
carbon nanotubes and silicone oil which are then mixed with thermoplastic
polymers. Id. The Examiner finds that although Takayuki discloses the use
of silicone oils, the reference does not disclose any of the oils required by
claim 1. Id. at 6. In Lockwood, the Examiner finds disclosure of carbon
nanotube concentrates in oil, including silicone oils and vegetable oils. Id.
4 Although the Examiner did not address claim 2 separately, we note that it
recites an improper Markush group (“consisting of at least one oil”). The
Examiner and Appellants may wish to address this issue.
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Appeal 2017-002032
Application 13/497,559
In De Gunst, the Examiner finds disclosure of masterbatch polymer
compositions comprising carbon black, a liquid medium which may be
soybean oil, and a thermoplastic polymer which is of the same genus as that
disclosed in Takayuki. Id. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to use
vegetable oils, as taught in Lockwood and De Gunst, in the composition of
Takayuki, “since vegetable oils are (a) known functional equivalents for [oil
in] oil/carbon nanotube concentrates and (b) are a known suitable liquid
medium picked from a finite amount of options for liquid mediums for
carbon material/oil/thermoplastic polymer compositions.” Id. at 7.
Takayuki teaches a solid carbon nanotube composition obtained by
kneading 30-70 wt% of carbon nanotubes and 30-70 wt% of silicone oil.
Takayuki Abstract. The silicone oil used in Takayuki may be straight
silicone oil or modified silicone oil, as long as there are 3 to 100,000 silicon-
oxygen repeating units. Id. 112.
Appellants argue that the Examiner provides no apparent reason to
replace the silicone oil of Takayuki with a vegetable oil taught by Lockwood
or De Gunst. Appeal Br. 5. We agree.
In addition to showing that each separate limitation in a claim under
examination is disclosed in a prior art reference, a conclusion of obviousness
requires showing that a person of ordinary skill at the time of the invention
would have selected and combined those prior art elements in the normal
course of research and development to yield the claimed invention. Unigene
Gabs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). In the
case before us, the Examiner has not adequately provided a reason to replace
the silicone oil of Takayuki with vegetable oil lacking silicon-oxygen
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Appeal 2017-002032
Application 13/497,559
repeating units. Such action would involve more than the simple
substitution of one known element for another to yield predictable results.
See KSR Inti Inc. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Specifically
Takayuki’s solid carbon nanotube composition is obtained by kneading
carbon nanotubes and silicone oil. Takayuki specifically discloses silicone
oil is required to achieve desired characteristics. Takayuki || 5 — 8. The
Examiner has not adequately explained that substituting vegetable oil for
silicone oil would have yielded carbon compositions having a high
concentration of carbon nanotubes and provide a flame retardant
composition that is required by Takayuki. “Both the suggestion [to combine
references] and the reasonable expectation of success must be founded in the
prior art, not in the applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493
(Fed. Cir. 1991). Where the references cited by the examiner fail to
establish a prirna facie case of obviousness, the rejection is improper. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
The Examiner reversibly errs in concluding that claim 1 is obvious
over Takayuki in view of Fockwood and De Gunst. We do not sustain the
rejection. For the reasons given above, we also do not sustain the rejection
of dependent claims 2—5, 14, and 21—23.
DECISION
The Examiner’s rejection of claims 1—5, 14, and 21—23 is reversed.
REVERSED
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