Ex Parte Mazur et al

Patent Trial and Appeal Board

Dec 28, 2016

13353468 (P.T.A.B. Dec. 28, 2016)

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.
13/353,468 01/19/2012 Stephen Mazur CL5092USNA 7719
23906 7590 12/30/2016
E I DU PONT DE NEMOURS AND COMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
EXAMINER
JELSMA, JONATHAN G
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN MAZUR, SIMON FRISK, and NATALIA V. LEVIT1
Appeal 2015-007253
Application 13/353,468
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL2
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1—4 and 6—24. We have jurisdiction
pursuant to 35 U.S.C. § 6(b). We AFFIRM.
1 According to Appellants, the Real Party in Interest is E.I. du Pont de
Nemours and Company. Appeal Brief filed February 4, 2015 (“Br.”), 1.
2 While Appellants maintain that they are “unaware of any related pending
appeals” (Br. 1), a pending appeal of U.S. patent application 13/353,453
(Appeal No. 2015-006579), which Appeal Brief was filed December 30,
2014, prior to the filing date of the Appeal Brief in this record, is an appeal
of an application relying on the same provisional applications for priority
benefit with claims relating to an electrochemical cell separator comprising
nanofibers arranged into a nonwoven web and thermoplastic particles coated
onto the surface of the nonwoven web.
Appeal 2015-007253
Application 13/353,468
CLAIMED SUBJECT MATTER
Appellants’ claimed invention is generally directed to a laminate
comprising a first layer comprising nanofibers arranged into a nonwoven
web and second layer comprising a first set of thermoplastic particles, and to
a process for manufacturing a laminate comprising coating a nanoweb with a
floe of thermoplastic particles. Spec. Abstract; independent claims 1 and 23.
Claims 1 and 23 are illustrative:
1. A laminate comprising a first layer comprising
nanofibers arranged into a nonwoven web, and second layer
comprising a first set of thermoplastic particles, said second
layer being bonded to the first layer and covering at least a
portion of the surface of the first layer, and the thermoplastic
particles are bonded into a coherent layer in which bonded
particles form a continuous porous layer over at least a fraction
of the surface of the nanofiber nonwoven web and wherein the
nonwoven web has a mean flow pore size of between 0.1
microns and 5 microns, and the particles have a number average
particle size less than the mean flow pore size and in which the
thermoplastic particles have a melting point onset of between
80°C and 180°C.
23. A process for manufacturing a laminate comprising the
step of coating a nanoweb with a floe of thermoplastic particles
wherein the floe forms a layer on the nanoweb and comprises
particles that have a number average particle size of less than or
equal to the mean flow pore size of the nano web.
Br. 10, 12 (Claims Appendix).
REJECTION
The Examiner maintains the final rejection of claims 1—4 and 6—24
under 35 U.S.C. § 103(a) as obvious over Hennige et al. (US 2008/0248381
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Application 13/353,468
Al, published October 9, 2008) and Arora et al. (US 2008/0070463 Al,
published March 20, 2008).3’4
DISCUSSION
Having carefully reviewed the Examiner’s rejection in light of
arguments advanced by Appellants in their Appeal Brief, we are not
persuaded that the Examiner erred reversibly in concluding that claims 1—4
and 6—24 are unpatentable for obviousness. We add the following.
Claims 1—4, 6—22, and 24
Appellants argue claims 1—4, 6—22, and 24 together on the basis of
claim 1, to which we limit our discussion. Br. 3—8.
The Examiner finds that Hennige discloses a separator for a battery
that comprises a porous carrier comprising nonwoven polymeric fibers, and
a porous coating comprising inorganic, nonelectroconductive particles on
and in the carrier. Final Act. 3; Hennige 121. The Examiner finds that
Hennige discloses that the separator further comprises a very thin layer of
waxy or polymeric thermoplastic particles on the inorganic coating, which
particles melt at a desired shutdown temperature (“shutdown layer”), thereby
closing the pores of the separator. Final Act. 2—\\ Hennige H 42, 44, 46.
The Examiner finds that Hennige discloses that preferred materials for the
shutdown layer have a melting point of not more than 180°C, and preferably
less than 130-C. Final Act. 4; Hennige 146. Hennige discloses that the
shutdown layer is produced by suspending or dispersing thermoplastic
particles in a nonaqueous solvent, resulting in an average particle size of less
3 Final Office Action entered November 3, 2014 (“Final Act.”), 2.
4 Examiner’s Answer entered May 20, 2015 (“Ans.”).
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Application 13/353,468
than 1 micron, and applying the suspension to the inorganic coating to form
a porous, sheet-like layer. Hennige Tflf 84, 86.
The Examiner determines that a combination of the inorganic coating
and shutdown layer disclosed in Hennige is analogous to the second layer
recited in claim 1 because claim 1 recites that the second layer comprises a
first set of thermoplastic particles, which does not exclude the presence of
additional elements in the second layer. Final Act. 5.
The Examiner acknowledges that Hennige discloses that the pore size
of the non woven carrier is 5 to 500 microns, and relies on Arora’s disclosure
of a nonwoven nanoweb that comprises polymer nanofibers, has a mean
flow pore size of 0.01 to about 5 microns, and is used as a separator for a
battery. Final Act. 4—5; Hennige 129; Arora H 21, 26, 45. 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 the nonwoven nanoweb disclosed in Arora
as the nonwoven carrier disclosed in Hennige because doing so would
involve simple substitution of known elements having the same function.
Final Act. 5.
Appellants argue that their claimed invention is directed to a
shutdown thermoplastic particle layer (second layer) that is adjacent to and
bonded directly to a nonwoven web (first layer), while Hennige discloses a
shutdown thermoplastic particle layer that is attached to or adjacent to a
ceramic inorganic layer, and the ceramic inorganic layer is adjacent to a
nonwoven layer. Br. 4—6. Appellants contend that Hennige therefore does
not disclose a thermoplastic particle layer bonded to a nonwoven layer as
claimed. Id.
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Application 13/353,468
However, claim 1 recites that the second layer comprises a first set of
thermoplastic particles, and by virtue of using the transitional term
“comprising,” does not exclude the presence of additional unclaimed
elements in the second layer, such as the inorganic coating disclosed in
Hennige. In re Baxter, 656 F.2d 679, 686-87 (CCPA 1981) (“As long as one
of the monomers in the reaction is [the claimed] propylene, any other
monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”) Accordingly, we find no
error in the Examiner’s determination that the inorganic coating and
shutdown layer disclosed in Hennige correspond to the second layer
comprising a first set of thermoplastic particles recited in claim 1.
Moreover, even if we consider the inorganic coating disclosed in
Hennige to be a separate and distinct layer from Hennige’s shutdown layer
as Appellants urge, claim 1 recites a laminate comprising first and second
layers, and therefore does not exclude the presence of additional, unclaimed
layers in the laminate, such as an intermediate, inorganic particle layer as
disclosed in Hennige. Gillette Co. v. Energizer Holdings, Inc. 405 F.3d
1367, 1371-1372 (Fed. Cir. 2005) (“The word ‘comprising’ transitioning
from the preamble to the body signals that the entire claim is presumptively
open-ended.”) On this record, Appellants do not refer to any disclosure in
their Specification that would have disavowed or disclaimed the
intermediate, inorganic particle layer disclosed in Hennige. Br. 3—8. See,
e.g., Leibel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir.
2004) (“[T]he claims of the patent will not be read restrictively unless the
patentee has demonstrated a clear intention to limit the claim scope using
‘words or expressions of manifest exclusion or restriction.’”)
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Application 13/353,468
As to the second layer being bonded to the first layer and covering at
least a portion of the surface of the first layer (claim 1), the claim does not
recite that the second layer is directly bonded to the first layer or that it
directly covers at least a portion of the surface of the first layer. Appellants’
arguments are, accordingly, not persuasive because they are not grounded on
limitations that appear in the claims. In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Likewise,
although claim 1 also recites that the thermoplastic particles form a
continuous porous layer over at least a fraction of the surface of the
nanofiber nonwoven web, it does not recite that the thermoplastic particle
layer is directly over at least a fraction of the surface of the nanofiber
nonwoven web. Accordingly, claim 1 does not exclude from the laminate an
intermediate, inorganic particle layer such as disclosed in Hennige through
which Hennige’s thermoplastic particles indirectly bind to Hennige’s
nonwoven carrier, resulting in the shutdown layer indirectly covering, and
being indirectly over, at least a portion of the surface of the nonwoven
carrier.5 Therefore, we agree with the Examiner that the combined
disclosures of Hennige and Arora would have suggested a laminate having
the features recited in claim 1 to one of ordinary skill in the art at the time of
the invention.
5 In the event of further prosecution of this application, we advise both
Appellants and the Examiner to consider whether the porous carrier
disclosed in Hennige comprising nonwoven polymeric fibers, and the porous
coating on and in the carrier comprising inorganic, nonelectroconductive
particles (Hennige 121), collectively corresponds to the recited first layer
comprising nano fibers arranged into a nonwoven web (claim 1).
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Appellants further argue that the Examiner improperly relies on
inherency in rejecting the claimed laminate as obvious over the disclosures
of Hennige and Arora. Br. 7—8. However, the Examiner’s rejection is not
based on inherency, as the Examiner points out in the Answer. Ans. 13.
We accordingly sustain the Examiner’s rejection of claims 1—4, 6—22,
and 24 under 35 U.S.C. § 103(a).
Claim 23
Appellants argue that Hennige does not explicitly or inherently
disclose thermoplastic particles in the form of a floe as recited in claim 23.
Br. 8.
However, as the Examiner points out (Ans. 15), Appellants’
Specification indicates that particles may be flocculated from a colloidal
suspension by adding organic solvents to the suspension. Spec. 11,11. 4—5.
The Examiner finds that Hennige discloses that the shutdown layer is
produced by suspending or dispersing thermoplastic particles in a
nonaqueous solvent, and Hennige discloses that suitable solvents include
hydrocarbons, ethers, or ketones. Ans. 15—16; Hennige | 84. The Examiner
determines that the suspension of thermoplastic particles in organic solvent
disclosed in Hennige corresponds to the floe recited in claim 23, in
accordance with Appellants’ Specification. Ans. 16.
Appellants’ argument that Hennige does not explicitly or inherently
disclose thermoplastic particles in the form of a floe does not explain why
the disclosure in Hennige relied on by the Examiner of a suspension of
thermoplastic particles in an organic solvent is not disclosure of
thermoplastic particles in the form of a floe. Appellants’ argument is
therefore unpersuasive of reversible error. 37 C.F.R. § 41.37(c)(l)(iv) (“A
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Application 13/353,468
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim”); In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art. Because Lovin did
not provide such arguments, the Board did not err in refusing to separately
address claims 2—15, 17—24, and 31—34.”).
Accordingly, we sustain the Examiner’s rejection of claim 23 under
35 U.S.C. § 103(a).
DECISION
In view of the foregoing, the Examiner’s rejection of claims 1—4 and
6-24 under 35 U.S.C. § 103(a) 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)(1).
AFFIRMED
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