Ex Parte Roberson et al

Patent Trial and Appeal Board

Nov 14, 2017

13278710 (P.T.A.B. Nov. 14, 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.
13/278,710 10/21/2011 Luke B. Roberson KSC-13343 6424
25190 7590 11/14/2017
NASA JOHN F. KENNEDY SPACE CENTER
MAIL CODE: CC-A/OFFICE OF CHIEF COUNSEL
ATTN: PATENT COUNSEL
KENNEDY SPACE CENTER, FL 32899
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
11/14/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUKE B. ROBERSON, MARTHA K. WILLIAMS,
TRACY L. GIBSON, LANETRA C. TATE, SARAH J. SNYDER, and
CRAIG R. FORTIER1
____________

Appeal 2016-004184
Application 13/278,710
Technology Center 1700
____________

Before CHUNG K. PAK, CHRISTOPHER C. KENNEDY, and
BRIAN D. RANGE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–24 and 33–35. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to inkjet printing of conductive
inks, and associated wiring technologies. E.g., Spec. ¶ 7; Claims 1, 33.

1 According to the Appellants, the real party in interest is the United States
of America as represented by the Administrator of the National Aeronautics
and Space Administration. App. Br. 4.
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Claims 1 and 33 are reproduced below from pages 18 and 22 (Appendix I)
of the Appeal Brief:
1. A method of forming a conductive material comprising:
applying a conductive ink with a printer in single or multiple
passes onto a substrate; wherein the conductive ink comprises
an electrical conductor selected from the group consisting of:
carbon nanotubes wherein the carbon nanotubes are not metal-
coated carbon nanotubes, graphene, a polycyclic aromatic
hydrocarbon, metal nanoparticles, an inherently conductive
polymer (ICP) wherein the ICP is not PEDOT, ionic liquid, and
combinations thereof; and
drying the conductive ink on the substrate to form an adherent
conductive material on the substrate;
wherein (i) the substrate is magnetic before the applying step;
or (ii) during the applying step, a magnetic field is applied to
the conductive ink from a source other than the substrate;
wherein the adherent conductive material has a surface
resistivity of less than 100 Ohms/square.
33. A method of producing a wire comprising a damage detection
layer, the method comprising:
obtaining a wire comprising a core conductor surrounded by an
insulator; and
applying a conductive ink with a printer in multiple passes onto
the insulator;
wherein the conductive ink comprises an electrical conductor
selected from the group consisting of: carbon nanotubes,
graphene, a polycyclic aromatic hydrocarbon, metal
nanoparticles, an inherently conductive polymer (ICP), ionic
liquid, and combinations thereof; and
drying the conductive ink on the substrate to form the adherent
conductive material on the insulator;
wherein the adherent conductive material is adapted to be used
in detecting damage to the wire.
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REJECTIONS ON APPEAL
1. Claims 1, 3–10, 14–16, 17, 22, 24, and 35 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Mao (US 2004/0013597, published
Jan. 22, 2004), Rinzler (US 7,572,743 B2, issued Aug. 11, 2009), and Yaniv
(US 6,312,303 B1, issued Nov. 6, 2001). Ans. 3–5.
2. Claims 2, 9, 11, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Mao, Rinzler, Yaniv, and Ford (WO 2008/092696 A1,
published Aug. 7, 2008) (“WO ’696,” consistent with the nomenclature of
the Examiner and the Appellants). Ans. 5–6.
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mao, Rinzler, Yaniv, WO ’696, and Jang (US 2012/0007913 A1, filed
July 18, 2011). Ans. 6–7.
4. Claims 13, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mao, Rinzler, Yaniv, WO ’696, and Natekar
(US 2009/0072013 A1, published Mar. 19, 2009). Ans. 7–8.
5. Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mao, Rinzler, Yaniv, WO ’696, and Chen
(US 2007/0151744 A1, published July 5, 2007). Ans. 8–9.
ANALYSIS
Rejections 1 and 4
With the exception of claim 24, the Appellants argue the claims
subject to Rejection 1 as a group. We select claim 1 as representative of the
grouped claims, and we limit our discussion of Rejection 1 to claims 1 and
24. After review of the cited evidence in the appeal record and the opposing
positions of the Appellants and the Examiner, we determine that the
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Appellants have not identified reversible error in the Examiner’s rejection of
claims 1 and 24. Accordingly, we affirm the rejection of claims 1, 3–10,
14–16, 17, 22, 24, and 35 for reasons set forth below, in the Final Action,
and in the Examiner’s Answer. See generally Final Act. 3–5; Ans. 3–5, 9,
10.
The Examiner finds that the combination of Mao and Rinzler teaches
each element of claim 1 except that Mao and Rinzler “fail to teach the
carbon nanotubes not be metallized.” Ans. 3–4. The Examiner finds that
Yaniv “teaches alignment of [non-metallized] carbon nanotubes within a
host material,” and that Yaniv “teaches the host material can be conductive
and hence would facilitate alignment by magnetic field.” Id. at 4. The
Examiner concludes that it would have been obvious “to have modified Mao
. . . in combination with Rinzler . . . by incorporating a conductive host
material as evidenced by Yaniv . . . with the expectation of achieving similar
success, i.e. alignment of the nanotubes either by conductive coating thereon
or by a conductive host material.” Id. at 4–5.
The Appellants first argue that Mao discloses only metallized carbon
nanotubes and that “it does not disclose using magnetism with carbon
nanotubes that are not metal-coated carbon nanotubes.” App. Br. 9.
That argument is not persuasive. See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”). The Examiner recognizes that Mao’s nanotubes are
metallized, and the Examiner relies on Yaniv’s disclosure of using a
magnetic host material, rather than metallized or magnetic nanotubes, in
order to align nanotubes through the use of magnetic force. Ans. 4–5; Yaniv
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at Abstract, 2:21–24. The Appellants do not persuasively challenge the
Examiner’s findings that the combination of Mao, Rinzler, and Yaniv
discloses each limitation of claim 1 and that a person of ordinary skill in the
art would have been motivated to combine those references to achieve a
method that falls within the scope of claim 1.
The Appellants argue that an “essential element” of Yaniv is the use
of a magnetic host phase, which “is not recited in claim 1.” App. Br. 9.
That argument is not persuasive because claim 1 does not preclude the use of
a magnetic host phase. The preamble to claim 1 uses the word
“comprising,” which indicates that methods including additional steps
beyond those expressly recited by the claim will still fall within the scope of
the claim. The “wherein the conductive ink” clause of claim 1 also uses the
word “comprises,” indicating that the ink may include components beyond
those expressly recited. On this record, the Appellants’ argument fails to
show reversible error in the Examiner’s rejection. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (explaining that, even if the examiner had failed
to make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because “it has long been the Board’s
practice to require an applicant to identify the alleged error in the examiner’s
rejections”).
The Appellants argue that unexpected results support a conclusion of
nonobviousness in this case. App. Br. 10. More specifically, the Appellants
state that “[t]he inventors showed that with single-walled carbon nanotubes
(not metal coated) the resistivity decreased from 1000 Ohms to under 100
Ohms by printing on magnetic sheets instead of non-magnetic sheets.” Id.
The Appellants argue that this is unexpected in view of the prior art because
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Mao’s nanotubes have a metallized coating, and Yaniv uses a magnetic host
phase. Id. The Appellants also argue that it was unexpected that uncoated
carbon nanotubes would respond to a magnetic field. Id.
Those arguments are not persuasive. The burden of establishing that
unexpected results support a conclusion of nonobviousness rests with the
Appellants. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Here, the
Appellants do not identify the closest prior art or attempt to compare the
alleged unexpected results to results obtained from the closest prior art. The
Examiner finds that Rinzler teaches resistivities that fall within the scope of
claim 1, Ans. 4, and the Appellants do not dispute this finding. Nor do the
Appellants provide any evidence or persuasive argument that any results are,
in fact, unexpected. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972)
(“[I]t is not enough to show that results are obtained which differ from those
obtained in the prior art: that difference must be shown to be an unexpected
difference.”); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”). The
Appellants do not persuasively explain why the facts that Mao’s nanotubes
are metallized and Yaniv uses a magnetic host phase somehow suggests that
the claimed resistivities would have been unexpected. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results
must be established by factual evidence. ‘Mere argument or conclusory
statements in the specification does not suffice.’” (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1994)).
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As to the Appellants’ argument that it was unexpected that uncoated
carbon nanotubes would respond to a magnetic field, that argument is not
commensurate with the scope of claim 1, and it does not provide any
evidence or explanation supporting the assertion of unexpected results. See
Pearson, 494 F.2d at 1405. Claim 1 says nothing about nanotube alignment,
and, in any event, it does not preclude the use of a magnetic host phase as
taught by Yaniv to achieve any desired alignment. On this record, the
Appellants have not established that unexpected results support a conclusion
of nonobviousness. Accordingly, we affirm the Examiner’s rejection of
claim 1.
Claim 24 recites: “The method of claim 1 further comprising sintering
the adherent conductive material on the substrate at a temperature of 130–
170 °C.” The Examiner’s analysis of that claim is as follows:
Regarding claim 24, the reference[s] are silent with respect to a
sintering step, however, it is the Examiner’s position that this is
conventional in the art and obvious absent a showing of
unexpected results garnered therefrom.
Ans. 5. We understand the Examiner’s determination that sintering “is
conventional in the art” to be official notice in support of the Examiner’s
conclusion of obviousness. See MPEP 2144.03.
Although the Appellants argue that “[t]he Examiner saying that
something is conventional in the art does not establish it,” and that “[the
Examiner] needs to cite a reference or other evidence to establish that it is
conventional in the art,” the Appellants do not actually deny the Examiner’s
finding that sintering at the claimed temperatures is conventional in the art.
See App. Br. 10. The evidence of record appears to support the Examiner’s
finding. See, e.g., Natekar ¶ 36 (describing sintering in the context of inkjet-
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printed nano-pastes), ¶ 48 (similar), claim 14 (similar). In view of the
Appellants’ failure to deny the Examiner’s finding, we accept it as fact, and
we affirm the Examiner’s rejection of claim 24.
With respect to Rejection 4, because claims 13, 21, and 23 (which are
subject to Rejection 4) depend from claim 1, the rejection of which we
affirm above, and the Appellants raise no new arguments concerning those
claims, we affirm the Examiner’s rejection of claims 13, 21, and 23.
Rejections 2 and 3
With respect to claims 2, 9, 18, and 19, which are subject to Rejection
2, the Appellants argue that additional reference WO ’696 “does not
remedy” the deficiencies alleged by the Appellants with respect to Rejection
1. App. Br. 11. Because claims 2, 9, 18, and 19 depend, directly or
indirectly, from claim 1, the rejection of which we affirm above, and the
Appellants raise no new arguments concerning those claims, we affirm the
Examiner’s rejection of claims 2, 9, 18, and 19.
With respect to claim 11, as an initial matter we note that, although
the Examiner groups claim 11 with claims 2, 9, 18, and 19, it does not
appear to be properly grouped with those claims. In the Advisory Action
dated June 24, 2015, the Examiner stated that claim 11 is rejected only under
the combination of Mao, Rinzler, and WO ’696, and that the Yaniv reference
is not applied to claim 11. However, for reasons set forth below, we reverse
the Examiner’s rejection of claim 11 regardless of whether Yaniv is
considered to be part of the rejection of claim 11.
Claim 11 is reproduced from page 19 of the Appeal Brief (Appendix
I) below (emphasis added):
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11. A method of forming a conductive material comprising:
applying a conductive ink with a printer in single or multiple
passes onto a substrate;
wherein the conductive ink comprises an electrical conductor
selected from the group consisting of: carbon nanotubes,
graphene, a polycyclic aromatic hydrocarbon, metal
nanoparticles, an inherently conductive polymer (ICP) wherein
the ICP is not PEDOT, ionic liquid, and combinations thereof;
and
drying the conductive ink on the substrate to form an adherent
conductive material on the substrate;
wherein (i) the conductive ink is applied in at least 10 passes; or
(ii) the conductive ink comprises uncoated carbon nanotubes,
functionalized carbon nanotubes, or metal-coated carbon
nanotubes in suspension in a polar solvent comprising a
detergent, ionic liquid, or anti-agglomeration agent; or (iii) the
method further comprises sintering the adherent conductive
material on the substrate at a temperature of 130-170 °C; or (iv)
the substrate is magnetic before the applying step; or (v) during
the applying step, a magnetic field is applied to the conductive
ink from a source other than the substrate;
wherein the adherent conductive material has a surface
resistivity of less than 100 Ohms/square;
wherein the adherent conductive material comprises a plurality
of layers, wherein each layer is formed by applying a
conductive ink in at least one pass, wherein at least two
adjoining layers comprise different electrical conductors or
different combinations of electrical conductors.
In particular, we note that claim 11 requires that the adherent conductive
material be applied as a plurality of layers, and that “at least two adjoining
layers comprise different electrical conductors or different combinations of
electrical conductors.”
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Concerning that limitation, the Examiner finds that the combination of
Mao, Rinzler, and Yaniv “fail[s] to teach multiple layers.” Ans. 6. The
Examiner finds that WO ’696 teaches a process “whereby CNT’s [sic] are
applied to a substrate by ink printing whereby the coating can be applied by
multiple layers and passes and with different concentrations.” Id.
The Appellants argue that the disclosure in WO ’696 of using
different concentrations of carbon nanotubes in different layers does not
meet the disputed claim limitation. App. Br. 12 (“Different concentrations
or amounts of the same conductor is not the same thing as different
conductors.”).
The Examiner responds that “[a layer] having twice as many CNT’s
would be different from one another and meet the claimed limitation.”
Ans. 10.
We are not persuaded by the Examiner’s rationale. Contrary to the
Examiner’s apparent interpretation of claim 11, claim 11 does not merely
require the layers to be “different from one another.” See id. The plain
language of claim 11 expressly requires “different electrical conductors or
different combinations of electrical conductors” in “at least two adjoining
layers.” Claim 11 limits the electrical conductors to “carbon nanotubes,
graphene, a polycyclic aromatic hydrocarbon, metal nanoparticles, an
inherently conductive polymer (ICP) wherein the ICP is not PEDOT, ionic
liquid, and combinations thereof.” Because the plain language of the claim
requires “different electrical conductors” or “different combinations of
electrical conductors,” and merely having different concentrations of the
same electrical conductor does not fall within the scope of that language, we
cannot sustain the rejection of claim 11. The fact that Mao and Yaniv may
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teach conductors other than carbon nanotubes, see Ans. 10, is not persuasive
because the Examiner expressly finds that Mao and Yaniv do not teach
layers, see Ans. 6. The Examiner provides no explanation as to how or why
Mao and Yaniv would have motivated a person of ordinary skill in the art to
achieve the layer structure of claim 11.
Claim 12 (subject to Rejection 3) depends from claim 11, and the
Examiner’s analysis of claim 12 does not remedy the error identified above
with respect to claim 11. See Ans. 11 (agreeing with the Appellants that
Jang “was cited for teaching using CNT’s [sic] and conductive polymers and
not for the teaching of multiple layers with different conductors”).
Consequently, we likewise cannot sustain the Examiner’s rejection of claim
12.
Rejection 5
Independent claim 33 is reproduced above. The Examiner finds that
the combination of Mao, Rinzler, Yaniv, and WO ’696 “fails to teach the
CNT used in wire coatings.” Ans. 8. However, the Examiner finds that
Chen “teaches using CNT’s coating as a shielding layer for wire
manufacturing. The CNT layer is applied over a metal core having an
insulation layer thereon and then the CNT layer is applied following by
another protection layer.” Id. at 9. The Examiner concludes:
Therefore, it would have been within the skill of one practicing
in the art at the time the invention was made to have modified
Mao in combination with Rinzler further in combination with
Yaniv further in combination with WO 2008/092696 process to
be utilized in a wire coating as evidenced by Chen as both
coatings include CNT’s.
Ans. 9 (patent and publication numbers omitted).
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Relying on the declaration of named inventors Roberson and Gibson,
the Appellants argue that the nanotube shielding layer of Chen could not be
produced with a printer, even if multiple passes were used. App. Br. 16.
The Appellants also argue that the combined prior art does not teach or
suggest the limitation “wherein the adherent conductive material is adapted
to be used in detecting damage to the wire,” and that “there is not motivation
to combine reference teachings [sic].” Id. at 16–17.
The Examiner responds by disagreeing, without providing any
explanation, with the Appellants’ assertions concerning whether a
sufficiently thick shielding layer could be produced with a printer, and by
stating that “it is known that shielding layers are applied to cable structures
and if these layers are compromised then ‘damage’ is detectable and would
meet the claimed limitations as recited.” Ans. 12.
We are not persuaded by the Examiner’s rationale. As an initial
matter, we note that the Examiner’s analysis described above appears to
concern solely whether a person of ordinary skill in the art could have made
the proposed modification, not whether a person of ordinary skill in the art
would have been motivated to do so. That is insufficient. See Belden Inc. v.
Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
arrive at the claimed invention.” (emphases in original)).
Additionally, the Appellants provide evidence in the form of the
Roberson and Gibson Declaration that a printing process could not
practically produce a layer sufficiently thick for the shielding application of
Chen. Roberson & Gibson Decl. ¶ 5. The Examiner’s mere statement of
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disagreement with that evidence is not persuasive. See Ans. 12. Although
the Examiner is correct that claim 33 does not recite a thickness, see id., that
is irrelevant to whether a person of ordinary skill in the art would have been
motivated to use a printing process, such as that of Mao or Rinzler, to
achieve the shielded cable of Chen. The only evidence of record is that a
person of ordinary skill in the art would not have understood a printing
process to be suitable for Chen’s shielded cable, and therefore would not
have been motivated to combine the references as proposed by the
Examiner. On this record, we are not persuaded that a preponderance of the
evidence supports the Examiner’s rejection. Accordingly, we reverse the
Examiner’s rejection of claim 33.
Because claim 34 depends from claim 33 and the Examiner’s analysis
of that claim does not remedy the error identified above, we likewise reverse
the Examiner’s rejection of claim 34.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1–10, 13–24,
and 35.
We REVERSE the Examiner’s rejections of claims 11, 12, 33, and 34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART