Ex Parte RiceDownload PDFBoard of Patent Appeals and InterferencesMar 25, 201011166056 (B.P.A.I. Mar. 25, 2010) Copy Citation 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 Appeal 2009-002761 Application 11/166,065 2 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. Appeal 2009-002761 Application 11/166,065 3 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. Appeal 2009-002761 Application 11/166,065 4 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.) Appeal 2009-002761 Application 11/166,065 5 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 Appeal 2009-002761 Application 11/166,065 6 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 Appeal 2009-002761 Application 11/166,065 7 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. Appeal 2009-002761 Application 11/166,065 8 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 tkl DINSMORE & SHOHL LLP One Dayton Centre One South Main Street, Suite 1300 Dayton, OH 45402-2023 Copy with citationCopy as parenthetical citation