Ex Parte Rice

Board of Patent Appeals and Interferences

Mar 25, 2010

11166056 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte BRIAN P. RICE
_____________

Appeal 2009-002761
Application 11/166,056
Technology Center 2800
______________

Decided: March 25, 2010
_______________

Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and MARC S.
HOFF, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3, 4, 7 through 12, and 16 through 23.
We affirm-in-part.
INVENTION
The invention is directed to a sensing system to monitor structural
health of polymeric matrix composite structures (Spec. 1). Claim 1 is
reproduced below:
1. A sensing system for monitoring the structural health of a
structure comprising:
a sensor comprising a conductive ink containing from about 4
to about 12% by weight vapor grown carbon nanofibers having a high
aspect ratio and at least one polymeric resin; and
a data acquisition system; wherein said sensor is applied in the
form of a grid pattern directly to the surface of said structure.

REFERENCES
Krivopal US 5,989,700 Nov. 23, 1999
Kimura et al. US 6,276,214 B1 Aug. 21, 2001
Axelgaard US 6,643,532 B2 Nov. 4, 2003
Wang et al. US 2003/0039816 A1 Feb. 27, 2003
Hermann et al. US 2004/0239475 A1 Dec. 2, 2004

REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 3, 4, 7, and 8 under 35 U.S.C.
§ 103(a) as being unpatentable over Kimura, in view of Wang, Axelgaard
and Krivopal. The Examiner’s rejection is on pages 4 through 7 of the
Answer.
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The Examiner has rejected claims 9, 10, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Kimura, in view of Wang, and Krivopal.
The Examiner’s rejection is on pages 7 through 10 of the Answer.
The Examiner has rejected claims 12, and 16 through 23 under 35
U.S.C. § 103(a) as being unpatentable over Kimura, in view Wang,
Axelgaard, Krivopal and Hermann. The Examiner’s rejection is on pages 10
through 13 of the Answer.
ISSUES
Rejection of claims 1, 3, 4, 7, and 8 under 35 U.S.C. § 103(a)
Appellant argues on pages 7 through 13 of the Appeal Brief1 that the
Examiner’s rejection of claims 1, 3, and 4 is in error. Appellant asserts on
page 12 of the Appeal Brief that neither Krivopal nor any of the other cited
references teach “using from 4 to 12% by weight of vapor grown carbon
nanofibers in a conductive ink for use in a sensor.”
Thus, Appellant’s contentions with respect to independent claim 1
present us with the issue of whether the combination of Kimura, Wang,
Axelgaard and Krivopal teaches a conductive ink using from 4 to 12% by
weight of vapor grown carbon nanofibers.2

Rejection of claims 9, and 10.
Appellant argues on page 14 of the Brief that the Examiner’s rejection
of claims 9 and 10 is in error. Appellant argues that the Examiner “has

1 Throughout the opinion we refer to the Appeal Brief filed April 7, 2008,
and the Reply Brief filed July 11, 2008.
2 Appellant’s arguments present additional issues, however this issue is
dispositive of the appeal of claims 1, 3, 4, 7 and 8.
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pointed to no reference which teaches a sensing system in which the
structure to be monitored comprises a polymeric matrix structure, or where
the polymeric resin in the conductive ink is the same as the polymer in the
polymeric matrix structure.” (Appeal Brief 14.)
The Appellant, with respect to independent claim 9, presents us with
the issue: does the combination of Kimura, in view Wang, and Krivopal
teach a system where the resin used in a polymeric matrix composite
structure to be monitored is the same resin used in the conductive ink used to
monitor the structure.

Rejection of claims 11, 12, and 16 through 23
Appellant argues on pages 14 through 16 of the Brief that the
Examiner’s rejection of claims 11, 12, and 16 through 23 is in error.
Appellant’s arguments raise the same issue identified above with respect to
claim 1.

FINDINGS OF FACT
1. Krivopal teaches a pressure sensitive ink composed of a polymer
binder and semiconductive nanoparticles. (Abstract.)
2. Krivopal teaches that the carbon particles are nanoparticles and
comprise 1-7% by weight of the ink. (Col. 2, ll. 15-19, 20-24, and
43-45.)
3. The nanoparticles can be of different materials, including graphite (a
form of carbon) and carbon. (Krivopal, col. 6, ll. 6-11.)
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4. Krivopal teaches that the ink can be used to make a button cell
shown in figures 2 and 3. The switch consists of two disks, items
10, of the conductive ink formed on a plastic substrate item 21.
When assembled the substrate is folded along line 23, such that the
two disks of conductive ink overlay each other. (Col. 3, 50-63, col.
4, 1-5.)
ANALYSIS
Rejection of claims 1, 3, and 4 under 35 U.S.C. § 103(a)
Appellant has persuaded us that the combination of Kimura, Wang,
Axelgaard and Krivopal does not teach a conductive ink using from 4 to
12% by weight of vapor grown carbon nanofibers as recited in claim 1. The
Examiner has found that Wang teaches vapor grown nanofibers that provide
improved mechanical, electronic and thermal transport properties. (Answer
14 & 15.) Appellant has not contested this finding. The Examiner has also
found that Wang’s nanofibers would be ideal for use in a sensing system
such as Kimura. (Answer 15.) Further, the Examiner finds that Krivopal, in
column 2, ll. 15-19, teaches a pressure sensitive ink using from 4 to 12% by
weight of carbon nanofibers. (Answer 14.) Based upon this the Examiner
concludes that the claim 1 limitation of “a conductive ink containing from
about 4 to about 12% by weight vapor grown carbon nanofibers …” would
have been obvious.
Appellant argues that Krivopal teaches ink that makes use of
semiconductive nanoparticles, such as carbon, and that the particles are
between 1 and 7%, by weight, of the ink. However, Appellant argues that
Krivopal does not teach that the particles are vapor grown carbon nanofibers
as claimed. (Appeal Brief 12, Reply Brief 4.) We concur with Appellant’s
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arguments. Krivopal teaches an ink with between 1 to 7% by weight of
carbon particles. (Fact 2.) Further, Krivopal teaches that the particles are
nanoparticles and that they can be of many types of materials including
carbon and graphite. (Fact 3.) Thus, we note that the evidence does not
support the Examiner’s finding that Krivopal teaches using carbon-
nanofibers, but just nanoparticles of carbon or graphite. Further, the
Examiner has not shown that using vapor grown carbon nanofibers from
about 4 to about 12% by weight is a known equivalent to carbon or graphite
in ink between 1 to 7% by weight (i.e., there is no showing that the different
structures of carbon produce the same result at the same percent weight).
Accordingly, we will not sustain the Examiner’s rejection of independent
claim 1, or claims 3, 4, 7 and 8 which are similarly rejected over the
combination of Kimura, Wang, Axelgaard and Krivopal.

Rejection of claims 9 and 10
We concur with the Examiner’s finding that the combination of
Kimura in view of Wang and Krivopal teaches using a system where the
resin used in a polymeric matrix composite structure to be monitored is the
same resin as is used in a conductive ink used to monitor the structure, as
recited in independent claim 9. The Examiner finds that Krivopal teaches
that the device is made of pressure sensitive ink and that the device has at
least one layer of ink on it; as such, Krivopal teaches that the same resin is
used in the structure as the sensor. (Answer 18.) We concur with the
Examiner’s finding. Krivopal teaches that two layers of ink are used to
create the device. (Fact 4.) We note that claim 9 does not require that the
conductive ink be separate from the structure being monitored, e.g. the claim
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does not recite that the ink is on the structure, rather, the ink could be the
structure. Thus, we concur with the Examiner that a layer of the ink in the
sensor of Krivopal meets the claimed structure and ink. Further, inasmuch
as the claim could be interpreted as requiring both a structural layer and
sensing ink layer, the teachings of Krivopal would meet the claims, as one of
the disks (item 10) meets the claimed sensor and the other disk meets the
claimed structure being monitored. As such, Appellant’s arguments, on
page 14 of the Appeal Brief, and page 4 of the Reply Brief, have not
persuaded us of error in the Examiner’s rejection of representative claim 9.
Accordingly, we sustain the Examiner’s rejection of claims 9 and 10 under
35 U.S.C. § 103(a).

Rejection of claims 11, 12, and 16 through 23
Independent claims 11 and 12 each include limitations directed to the
use of a conductive ink using from 4 to 12% by weight of vapor grown
carbon nanofibers. The Examiner’s rejection relies upon the combination of
Kimura, Wang, and Krivopal to teach this limitation. As discussed above
with respect to claim 1, we find that the evidence does not support the
Examiner’s finding that the combination of the references teaches such a
conductive ink as claimed. Accordingly, we will not sustain the Examiner’s
rejection of independent claims 11, 12 and dependent claims 16 through 23
for the reasons discussed supra with respect to claim 1.

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SUMMARY
We sustain the Examiner’s rejections of claims 9 and 10. We do not
sustain the Examiner’s rejections of claims 1, 3, 4, 7, 8, 11, 12, and 16
through 23.

ORDER
The decision of the Examiner to reject claims 1, 3, 4, 7 through 12,
and 16 through 23 is affirmed-in-part.
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)(iv).

AFFIRMED-IN-PART

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