Ex Parte Mao et al

Board of Patent Appeals and Interferences

May 7, 2009

10935652 (B.P.A.I. May. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONGSHENG MAO,
RICHARD LEE FINK, and
ZVI YANIV
____________

Appeal 2008-5196
Application 10/935,652
Technology Center 1700
____________

Decided:1 May 7, 2009
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and KAREN M.
HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the
Decided Date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery) or Notification Date
(electronic delivery).

Appeal 2008-5196
Application 10/935,652

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 2-4. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Claims 2-4 are reproduced below:
2. A composition comprising carbon nanotubes and an
inorganic adhesive material, wherein some of the carbon nanotubes
are exposed within microcracks formed in the composition.

3. The composition as recited in claim 2, wherein at least one
of the exposed carbon nanotubes bridges across the microcrack.

4. The composition as recited in claim 2, wherein at least one
carbon nanotubes exposed within the microcrack is broken in two.

On review is the Examiner’s sole remaining rejection of claims
2-4 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Amey (US 6,409,567 B1,
issued Jun. 25, 2002 to Amey, Jr. et al.) or Bouchard (US
2002/0074932 A1, pub. Jun. 20, 2002 to Bouchard et al.) (Ans. 2-3).
II. DISPOSITIVE ISSUE
The issue on appeal is: Have Appellants shown that the
Examiner reversibly erred in finding it reasonable to believe that the
compositions of Amey or Bouchard would inherently contain (1)
microcracks with exposed nanotubes within the cracks as required by
claim 2, (2) with at least one carbon nanotube bridging a crack as
required by claim 3, and (3) with at least one exposed nanotube
broken in two as required by claim 4, such that the burden properly
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shifted to Appellants to show that, in fact, there is a patentable
difference between the claimed and prior art compositions?
III. FINDINGS OF FACT
The following enumerated findings of fact (“FF”) are of
particular relevance:
1. Appellants contend that the Examiner has not shown how the
disclosures in Amey and Bouchard were identical, or
substantially similar, to that described in the present invention
(Br. 5).
2. The Examiner finds that Amey describes mixing carbon
nanotubes with glass frit that upon melting forms an inorganic
adhesive coating on a substrate, drying to form a dried paste,
and firing (Ans. 3, citing Amey, col. 4, ll. 36-42, col. 6, ll. 9-14,
col. 7, ll. 31-60, and col. 10, ll. 20-44).
3. The Examiner further finds that Amey’s composition is formed
by a process substantially similar to that disclosed by applicants
such that there is a reason to believe that the composition of
Amey, upon drying/curing results in a composition in which
some of the carbon nanotubes are exposed within microcracks,
bridge across the microcrack, and are broken in two (Ans. 4).
4. Appellants’ Specification discloses mixing carbon nanotubes,
an inorganic adhesive, a carrier such as water or organic
solvent, and optionally binders (Spec. 5:23 to 6:12). This
mixture is applied to a substrate and either dried at room
temperature in the air or dried/cured in an oven to eliminate the
carrier (water or organic solvent) (Spec. 6:23 to 7:5).
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5. According to the Specification, “during the drying/curing
process, the composite material may shrink and crack as a result
of the shrinking.” (Spec. 12:1-2.)
6. Appellants’ Figure 6 illustrates that shrinking and cracking
results in the exposure of the carbon nanotubes within the
microcracks, bridging, and breaking. (Fig. 6; see also Spec.
12:1-10.)
7. Appellants contend that Amey does not disclose a mixture of
carbon nanotubes, but instead the mixture includes graphite
particles (Reply Br. 1).
8. Amey describes mixing graphite particles, glass frit, organic
medium, surfactant, and a solvent to form a paste (Amey, col.
7, ll. 32-33). The paste is screen printed onto substrate and
fired (Amey, col. 3, ll. 39-43).
9. Amey describes substituting carbon nanotubes for the graphite
particles in the paste in order eliminate an ion bombardment
step (Amey, col. 10, lines 20-23).
10. The Examiner finds that Bouchard discloses a composition
comprising nanotubes and glass frit that upon melting forms an
inorganic adhesive. According the Examiner the composition is
formed by mixing carbon nanotubes with inorganic adhesive,
coating on a substrate, drying to form a dried paste and firing.
(Ans. 4, citing Bouchard ¶¶ [0028], [0029], [0032], [0033],
[0035], [0036], and [0038].)
11. Appellants contend that Bouchard uses an organic medium,
not an inorganic adhesive (Reply Br. 1).
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12. Bouchard mixes acicular carbon (nanotubes being the
preferred acicular carbon) with glass frit, an inorganic material
that the Examiner finds to be an inorganic adhesive within the
meaning of the claims (Bouchard, ¶ [0029] and [0032]; Ans. 4).
13. Appellants contend that Bouchard teaches that the acicular
carbon appears to undergo no physical change during the firing
in nitrogen and therefore, teaches away from the possibility of
microcracking (Reply Br. 1, citing Bouchard ¶ [0036]).
IV. PRINCIPLES OF LAW
“[A] prior art reference without express reference to a claim
limitation may nonetheless anticipate by inherency.” In re
Omeprazole Patent Litig. v. Andrx Pharms., Inc., 483 F.3d 1364, 1373
(Fed. Cir. 2007).
Where the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily possess the characteristics of his
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). The
fairness of this shift in burden to the applicant is evidenced by the
PTO's inability to manufacture products or to obtain and compare
prior art products. Id.
V. ANALYSIS
We cannot agree with Appellants that the evidence relied upon
by the Examiner is insufficient to support the Examiner’s finding of
inherency. The Examiner’s reasonable conclusion of inherency is
based upon a comparison of the starting materials and processes of the
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prior art with those disclosed in the Specification. Our review
indicates that the evidence is adequate to shift the burden to the
Appellants to prove that the prior art products do not, in fact, possess
the characteristics due to microcracking relied upon for patentability.
Best, 562 F.2d at 1255.
As found by the Examiner, both the references teach mixing
carbon nanotubes with glass frit and other components such as solvent
and drying or firing the resulting paste (FF 2-3, 8-9, 10, and 12).
Appellants use similar starting materials and processes as the
references (FF 4). Moreover, Appellants’ Specification discloses that
it is the drying/curing step, i.e., the step of driving off the solvent or
carrier, that results in microcracking (FF 5). Given that both Amey
and Bouchard dry or fire a paste containing nanotubes, inorganic
adhesive, and solvents, it is reasonable to conclude that microcracking
would occur and that the nanotubes would be exposed within the
microcracks, some nanotubes would bridge the cracks, and some
would break given that such microcracking results in such exposure,
bridging, and breaking in Appellants’ composition (FF 6).
Furthermore, we cannot agree with Appellants that the presence
of organic medium in the composition of Bouchard overcomes the
Examiner’s reasonable conclusion of inherency. This is because
Appellants themselves suggest including other ingredients such as
organic solvent and binders (FF 4). Moreover, Appellants’
Specification discloses that the microcracking is a consequence of
driving off the carrier or solvent during the drying/curing process (FF
5).
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Nor can we agree with Appellants that Bouchard’s disclosure
that “acicular carbon appears to undergo no appreciable oxidation or
other chemical or physical change during the firing in nitrogen”
(Bouchard, ¶ [0036]; see also FF 13), “teaches away” from the
occurrence of microcracking. First, Bouchard’s statement is directed
to changes in the acicular carbon or nanotubes themselves, not
changes in the overall composition of acicular carbon and glass. In
other words, the statement conveys the fact that the nanotubes do not
change form or breakdown during firing. The fact that the nanotubes
retain their chemical and physical form does not preclude
microcracking due to carrier removal.
To the extent Appellants are arguing that Bouchard “teaches
away” in the sense that Bouchard would lead one of ordinary skill in
the art away from producing microcracks in the fired composition,
“the question whether a reference ‘teaches away’ from the invention is
inapplicable to an anticipation analysis.” Celeritas Techs., Ltd. v.
Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). It is also
inapplicable to the present inherency analysis.
Appellants have not shown that the Examiner reversibly erred
in finding it reasonable to believe that the compositions of Amey or
Bouchard would inherently contain (1) microcracks with exposed
nanotubes within the cracks as required by claim 2, (2) with at least
one carbon nanotube bridging a crack as required by claim 3, and (3)
with at least one exposed nanotube broken in two as required by claim
4. The burden was properly shifted to Appellants to show that, in fact,
there is a patentable difference between the claimed and prior art
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compositions. Appellants have not relied upon any objective evidence
commensurate in scope with their claims to overcome the Examiner’s
reasonable belief.
VI. CONCLUSION
Appellants have limited the scope of their arguments to the
above issues and do not further contest the Examiner’s rejection of the
claims. Therefore, we sustain the rejection of the Examiner.
VII. DECISION
The decision of the Examiner is affirmed.
VIII. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection
with this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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