Ex Parte Samejima et al

Patent Trial and Appeal Board

Sep 16, 2016

10492414 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/492,414 04/12/2004
42798 7590 09/16/2016
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Tadao Samejima
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7390/80994 1715
EXAMINER
COLE, ELIZABETH M
ART UNIT PAPER NUMBER
1789
MAILDATE DELIVERY MODE
09/16/2016 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 TADAO SAMEJIMA and SUSUMU SEKI
Appeal2014-008351
Application 10/492,414
Technology Center 1700
Before BEYERL YA. FRANKLIN, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 9-11 and 13-17. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
Appeal2014-008351
Application 10/492,414
STATEMENT OF THE CASE
Claim 9 is illustrative of Appellants' subject matter on appeal and is
set forth below:
Claim 9. A sodium-sulfur cell electrode material comprising a
cylinder having interior and peripheral wall surfaces wherein the interior and
peripheral wall surfaces are each comprised of a cut face of a nonwoven,
web-shaped carbon fiber fabric wherein the carbon fibers are oriented
substantially perpendicular to said cut faces, which are opposed to one
another, and at least a substantial portion of a first opposing uncut
surface of the non woven, web-shaped carbon fiber fabric abuts at least
a substantial portion of a second opposing uncut surface of the
nonwoven, web-shaped carbon fiber fabric, said cylinder being obtained
by a method comprising
providing the nonwoven, web-shaped carbon fiber fabric in which the
carbon fibers are substantially uni-directionally oriented, said nonwoven,
web-shaped carbon fiber fabric having received a needle punch treatment,
cutting said non-woven carbon fabric in a narrow width to obtain a
band-shaped article having first and second opposing uncut surfaces that
define a thickness therebetween and the opposing cut faces, provided the
carbon fibers are oriented substantially perpendicular to said cut faces, and
laminating said band-shaped article in a spiral cylinder so that said
carbon fibers are highly radially oriented from the center of said cylinder,
and so that said opposing cut faces are formed into said interior and
peripheral wall surfaces of said cylinder, and at least a substantial portion of
the first opposing uncut surface engages at least a substantial portion of the
second opposing uncut surface.
THE REJECTION
Claims 9-11 and 13-17 under 35 U.S.C. § 112, first paragraph, are
rejected as failing to comply with the written description requirement.
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Appeal2014-008351
Application 10/492,414
ANALYSIS
We select claims 9 and 15 as representative of all the claims on
appeal, based upon Appellants' presented arguments. 3 7 C.F .R. § 41.3 7 ( c)
(1) (iv) (2014).
We adopt the Examiner's findings and position in the record, and
AFFIRM. We add the following for emphasis.
The Examiner's position is that the Specification, as originally filed,
does not provide support for the limitation recited in claim 9 of "at least a
substantial portion of a first opposing uncut surface of the nonwoven, web-
shaped carbon fiber fabric abuts at least a substantial portion of a second
opposing uncut surface of the nonwoven." Ans. 2. The Examiner also states
that the Specification, as originally filed, does not support the recitation of
claim 9 of "at least a substantial portion of the first opposing uncut surface
abuts at least a substantial portion of the second opposing uncut surface."
Id. The Examiner also states that there is no support for the limitation
recited in claim 15 of "at least a portion of the first opposing uncut surface
engages at least a portion of the second opposing uncut surface." Id.
We agree with the Examiner that the Specification is silent as to
whether faces other than the peripheral wall surfaces are cut or uncut, and
therefore cannot provide support for the limitations regarding the "uncut"
surfaces, for the reasons stated on pages 4--6 of the Answer. As such, we
agree with the Examiner that the Specification does not provide adequate
support for the limitations regarding the uncut surfaces being in
"substantial" abutment or being "engaged" with each other. We also agree
with the Examiner, for the reasons set forth in the record, that the band
layers (as discussed in the submitted Declarations of record, listed in the
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Appeal2014-008351
Application 10/492,414
Evidence Appendix, and as discussed by Appellants on pages 11-19 of the
Appeal Brief, and in the Reply Briet) 1 could be wound and pressed with
only minimal abutment or no abutment and without being "engaged" with
each other. Ans. 2-3. In the Reply Brief, Appellants do not specifically
address this point made by the Examiner. Appellants discuss the spiral
winding theory and the corkscrew structure concept (Reply Br. 6-7), but do
not persuade us regarding the Examiner's point made that the band layers
could be wound and pressed with only minimal abutment or no abutment
and without being "engaged" with each other. We agree with the
Examiner's comments made in the paragraph bridging pages 5---6 of the
Answer, wherein the Examiner states that the Specification does not disclose
that the band is pushed such that a continuous surface is formed, does not
disclose uncut surfaces, does not disclose abutment between a substantial
portion of the uncut faces, and does not disclose that a substantial portion of
the first uncut surfaces is engaged with a substantial portion of the second
opposing uncut surface.
The Examiner also states, and we agree, that the Specification does
not specify whether the other faces of the band are cut or uncut, and
therefore does not provide support for the limitations regarding how uncut
faces are disposed or engaged relative to each other.2 Furthermore,
1 We agree with the Examiner's stated positon regarding these Declarations
as set forth in the record.
2 Similarly, the Board stated in the paragraph bridging pages 3--4 of the
Decision dated June 24, 2010 (Appeal No. 2009---011890) that "[a]ppellants
can point to no portion of the original Specification that supports the claim
requirement that a substantial portion of a first uncut surface of the fabric
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Appeal2014-008351
Application 10/492,414
Appellants have not convinced us that there is only one way to wind the
band such that the cut and uncut surfaces would be as recited in the claims,
from the perspective of a person of ordinary skill in the art. "[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane); see also In re Alton, 76 F.3d 1168, 1172, 1175-76, (Fed. Cir. 1996)
(citing In re Wertheim, 541 F.2d 257, 262---64 (CCPA 1976)). As such, we
are unpersuaded by Appellants' position.
In view of the above, we affirm the rejection.
DECISION
The rejection is affirmed.
Til'viE PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
AFFIRMED
abuts a substantial portion of a second uncut surface of the fabric. Indeed,
the Specification does not mention abutting first and second uncut surfaces
of the fabric."
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