Ex Parte SHIEH et al

Patent Trials and Appeals Board

May 28, 2019

13355651 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/355,651 01/23/2012
63796 7590 05/30/2019
DINSMORE & SHOHL LLP
900 Wilshire Drive
Suite 300
TROY, MI 48084
FIRST NAMED INVENTOR
TENGHUA TOM SHIEH
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.
TTC-97202/08 8786
EXAMINER
STANLEY, JANEL
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
MichiganPatTM@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TENGHUA TOM SHIEH, SHOHEI NOMURA,
ERICH BENJAMIN FIEDERLEIN, and KIYOTAKA YAMASHITA
Appeal2017-005762
Application 13/355,651
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the non-final rejection of
claims 1-7. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b ). We heard oral argument in this appeal on May 15, 2019.
We REVERSE.
Appellants' invention is directed to a process for designing and
producing a cooling fluid for use in a cooling system. (Spec. ,r 3; claim 1 ).
Claim 1 is illustrative of the issues on appeal:
1 The Appeal Brief on page 1 indicates that "Toyota Motor Engineering
& Manufacturing North America, Inc." is the assignee of record.
Appeal2017-005762
Application 13/355,651
1. A process for designing and producing a cooling
fluid for use in a cooling system, the process comprising:
selecting a plurality ofliquid-nanoparticle combinations to
be simulated, each of the liquid-nanoparticle combinations
including a liquid and a plurality of nanoparticles;
calculating a nanoparticle agglomerate shape distribution
for each of the liquid-nanoparticle combinations;
calculating a thermal conductivity for each of the
liquid-nanoparticle combinations as a function of the liquid, the
plurality of nanoparticles and the nanoparticle agglomerate shape
distribution for each of the liquid-nanoparticle combinations;
selecting a liquid-nanoparticle combination as a function
of the calculated thermal conductivities for the liquid-
nanoparticle combinations;
providing a liquid and a plurality of nanoparticles
corresponding to the selected liquid-nanoparticle combination;
and
mixing the provided liquid and plurality of nanoparticles
to produce a cooling fluid for use in a cooling system.
Appellants appeal the following rejection:
Claims 1-7 are rejected under 35 U.S.C. § 103 as unpatentable over P.
Keblinski et al., Mechanisms of Heat Flow in Suspensions of Nano-sized
Particles (Nanojluids), 45 INTERNATIONAL JOURNAL OF HEAT & MASS
TRANSFER, 855---63 (2002) (hereinafter "Keblinski 02") in view of Pawel
Keblinski et al., N anojluids for Thermal Transport, MATERIALSTODA Y,
36-44 (2005) (hereinafter "Keblinski 05").
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding Keblinski 02 and
Keblinski 05 with regard to the subject matter of claim 1 are located on
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Application 13/355,651
pages 3 to 5 of the Non-Final Office Action. 2 The Examiner finds, in
relevant part, that although Keblinski 02 and Keblinski 05 do not recite
explicitly the phrase "nanoparticle agglomerate shape distribution," the
combined teachings of the Keblinski references would have rendered
obvious the recited nanoparticle agglomerate shape distribution (Ans. 8;
Non-Final Act. 4). The Examiner finds Keblinski 05 teaches particle
aggregation and the formation of extended structures of linked nanoparticles,
but such is detrimental for nanotube suspensions since bundling of
nanotubes reduces the fiber aspect ratio (Non-Final Act. 4). The Examiner
finds that Keblinski 05 determines a size distribution of the aggregates in
suspension (Non-Final Act. 4). The Examiner concludes that it would have
been obvious to account for the aggregation/extended structures, as
influenced by their shape (instant geometric), as taught by Keblinski 05 in
the methods of Keblinski 02 motivated by Keblinski 02' s teaching that
interfacial resistance and nanoparticle clustering have major roles in
affecting thermal conductivity, and Keblinski OS's teaching that interfacial
resistance is impacted by aspect ratio, which may be detrimental or
beneficial depending on particle morphology (Non-Final Act. 4--5). The
Examiner finds that Keblinski 05' s teachings that aggregate size distribution
in nanofluid suspensions is of concern further supports the obviousness of
the claimed subject matter (Non-Final Act. 5).
2 The Examiner finds: " ... the only positively recited concrete method steps
to produce the claimed cooling fluid are 'providing a liquid and a plurality of
nanoparticles' and 'mixing the provided liquid and plurality of
nanoparticles', all other recited 'steps' are abstract 'mental steps'." (Ans. 8;
emphasis added). Despite the Examiner's finding regarding abstract, mental
steps, the Examiner does not make a formal rejection under 35 U.S.C. § 101.
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Appeal2017-005762
Application 13/355,651
Appellants argue the Examiner failed to make a prima facie case of
obviousness because neither Keblinski 02 nor Keblinski 05, alone or in
combination teaches calculating a nanoparticle agglomerate shape
distribution, calculating a thermal conductivity for each liquid-nanoparticle
combination as a function of the liquid, the plurality of nanoparticles and the
agglomerate shape distribution and selecting a liquid-nanoparticle
combination as a function of the calculated thermal conductivities for the
liquid-nanoparticle combinations as recited in the process claim 1 (App. Br.
3, 6). Appellants contend that Keblinski 02 calculates thermal conductivity
as a function of particle size and particle cluster size (App. Br. 5).
Appellants argue that Keblinski 05 discloses a normalized thermal
conductivity as a function of particle aspect ratio (App. Br. 6). Appellants
cite Figure 5A of the Specification as showing an agglomeration shape
distribution (App. Br. 3--4). Appellants contend that even if Keblinski
05 is interpreted as disclosing an effective thermal conductivity for a
liquid-nanotube mixture with a plurality of carbon nanotubes that have a
range of shapes, such a teaching is still not equivalent to a shape distribution
for one or more agglomerations of the carbon nanotubes (Reply Br. 3).
Appellants contend that Keblinski 05 depicts in Figure 6 the effective
thermal conductivity for liquid-nanotube mixtures for a plurality of carbon
nanotubes having the same aspect ratio ( or shape), not a liquid-nanotube
mixture with a plurality of carbon nanotubes having a range of shapes
(Reply Br. 3). Appellants argue that the terms size and shape were defined
in the declaration of Kiyotaka Yamashita (hereinafter the "Yamashita
Declaration" or "Yamashita Deel.") dated September 23, 2014, and these
terms are not synonymous (Reply Br. 3). The Yamashita Declaration states
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Application 13/355,651
that Figures 5A and 5B of the Specification show that the occurrence of
different angles between carbon nanotubes would define a particular shape
of the nanoparticle agglomeration, which is distinct from the size of the
nanoparticle (Yamashita Deel. ,r 13).
We begin by construing the claim term "nanoparticle agglomeration
shape distribution." The Examiner correctly finds that the Specification
does not explicitly define the term. The Specification does, however,
disclose that the agglomeration shape distribution is calculated using
molecular dynamics and may be determined as a function of at least one of
these parameters: temperature of the fluid, an aspect ratio of the nanotubes, a
length of the nanotubes, a diameter of the nanotubes, a chirality of the
nanotubes, a homo-molecular versus hetero-molecular nanotube system, and
combinations thereof (Spec. ,r 6). Figures 5A and 5B of the Specification
depict a nanoparticle agglomeration shape distribution (Spec. ,r,r 11, 12).
Figures 5A and 5B map the relative occurrence of particular angles between
nanotubes (Spec. ,r 29). The data for Figures 5A and 5B were determined
using molecular dynamics (Spec. ,r,r 27-29). In other words, Figures 5A and
5B demonstrate that a "nanoparticle agglomeration shape distribution" is a
mapping of the frequency of an angle between nanotubes in a liquid and,
thus, indicative of differently shaped agglomerates. Declarant Yamashita
states that the angular relationship between nanotubes corresponds to a
shape of the agglomerate (Yamashita Deel. ,r 13). Therefore, we construe
the claim phrase "nanoparticle agglomeration shape distribution" in light of
the Specification as the result of using molecular dynamics to calculate the
frequency of an occurrence of an agglomeration shape (e.g., the angular
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Appeal2017-005762
Application 13/355,651
relationship between nanoparticles as shown in Appellants' Figures 5A and
5B) in a fluid.
The Examiner determines that Keblinski 02 and Keblinski 05 would
have suggested accounting for the aggregation/extended structures, as
influenced by their shape as Keblinski 05 teaches and Keblinski 02 teaches
that nanoparticle clustering and interfacial resistance affects thermal
conductivity (Non-Final Act. 4--5). The Examiner finds that Keblinski 05
teaches that the interfacial resistance is impacted by aspect ratio and the
aggregation of the nanoparticles may be beneficial or detrimental depending
upon the particle morphology (shape) used (Non-Final Act. 5). Although
these findings indicate that aggregation of nanoparticles and individual
nanoparticle shapes affect the thermal conductivity of nanoparticle-fluid
solutions, these findings do not direct us to where the applied prior art
teaches or suggests calculating a nanoparticle agglomeration shape
distribution as that phrase is understood in light of the Specification. The
preponderance of evidence favors Appellants' argument of non-obviousness.
On this record, we reverse the Examiner's rejection.
DECISION
The Examiner's decision is reversed.
REVERSED
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