Ex Parte Silverman et al

Patent Trial and Appeal Board

Jan 30, 2018

14534464 (P.T.A.B. Jan. 30, 2018)

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.
14/534,464 11/06/2014 Edward M. Silverman NGC-401/006528-0030 8554
32205 7590 02/01/2018
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
EXAMINER
KOLLIAS, ALEXANDER C
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD M. SILVERMAN and HSIAO-HU PENG1
Appeal 2018-000880
Application 14/534,464
Technology Center 1700
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals the Examiner’s decision to finally reject claims 1—
3,5, 7—10, and 12, which constitute all the claims pending in this
application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
1 Appellant is the Applicant, Northrop Grumman Systems Corporation.
Northrop Grumman Space & Mission Systems Corporation is identified in
the Appeal Brief as the real party in interest. App. Br. 3.
2 In our Decision, we refer to the Specification filed November 6, 2014
(“Spec.”); Non-Final Office Action dated October 25, 2016 (“Non-Final
Act.”); Final Office Action dated February 6, 2017 (“Final Act.”); Appeal
Brief filed June 15, 2017 (“App. Br.”); and Examiner’s Answer to the
Appeal Brief dated August 9, 2017 (“Ans.”).
Appeal 2018-000880
Application 14/534,464
We AFFIRM.
The Claimed Invention
Appellant’s disclosure relates to polymer composites incorporating
nanofillers. Spec. 12. According to Appellant, the claimed invention
encompasses a material that achieves an improved damage resistant
reinforced composite by adding carbon nanotube (CNT) fibers, which serve
as the mechanical strengthening component. Spec. 1 6; Abstract.
Claims 1 and 7 are illustrative of the claimed subject matter on appeal
and are reproduced below from the Claims Appendix to the Appeal Brief
(App. Br. 26) (key disputed claim language italicized and bolded):
1. A composite material, comprising a polymer resin
and between 5 and 40 wt% carbon nanotubes (CNT)
having a diameter of approximately 20 to 35
nanometers and a length of approximately 100
micrometers the CNTs having a homogenous and
isotropic distribution in the polymer resin;
wherein the composite material does not comprise
carbon fibers.
7. A composite material, comprising
a polymer resin and between 5 and 40 wt% carbon
nanotubes (CNT) having a diameter of approximately
20 to 35 nanometers and a length of approximately 100
micrometers the CNTs having a homogenous and
isotropic distribution in the polymer resin; and
carbon fibers having a diameter of approximately
5000 nm and a length of approximately 1 millimeter.
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The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Thibaut et al.,
(hereinafter “Thibaut”)
US 5,597,857 Jan. 28, 1997
Dupire et al.,
(hereinafter “Dupire”)
US 6,331,265 B1 Dec. 18,2001
Nodera US 2006/0089434 Al Apr. 27, 2006
Meng et al.,
(hereinafter “Meng”)
US 2010/0019209 Al Jan. 28, 2010
Bastiaens et al.,
(hereinafter “Bastiaens”)
US 2012/0241686 Al Sep. 27, 2012
Hata WO 2013/051707 Al Apr. 11,2013
Hata et al., US 2014/0221533 Al Aug. 7, 2014
(hereinafter “Hata ’533”)
Dispersed, http://www.thefreedictionary.com/dispersed (last visited Oct. 19,
2016) (hereinafter “The Free Dictionary”).
The Rejections
On appeal, the Examiner maintains (Ans. 2) the following rejections:
1. Claims 1, 3, 5, 8, 10, and 12 are rejected under 35 U.S.C. § 103
as being unpatentable over Meng (“Rejection 1”). Final Act. 2; Non-Final
Act. 7.
2. Claims 1, 5, 8, and 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over Nodera (“Rejection 2”). Final Act. 4; Non-Final
Act. 10.
3. Claims 1—3, 5, 8—10, and 12 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Dupire in view of The Free
Dictionary (“Rejection 3”). Final Act. 5; Non-Final Act. 13.
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4. Claims 1,3,5, 8, 10, and 12 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Bastiaens in view of Thibaut
(“Rejection 4”). Final Act. 7; Non-Final Act. 18.
5. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable
over Hata3 (“Rejection 5”). Final Act. 8.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact finding and reasoning set forth in the Answer to
the Appeal Brief, Final Office Action, and Non-Final Office Action, which
we adopt as our own.
We highlight and address specific findings and arguments below for
emphasis.
Rejection 1
Appellant argues claims 1, 3, 5, 8, 10, and 12 as a group. App. Br. 6.
We select claim 1 as representative and the remaining claims subject to this
rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that Meng discloses a composite material
satisfying all of the limitations of claim 1 and thus, would have rendered
claim 1 obvious. Non-Final Act. 7—8 (citing Meng, Abstract, || 19-21).
3 The Examiner relies on and cites to the Hata ’533 reference, which is a
continuation of the U.S. patent application and English language translation
that corresponds to the Hata (WO 2013/051707) PCT application. Appellant
does not contest the Examiner’s reliance on Hata ’533 as the English
language equivalent of Hata.
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Application 14/534,464
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner failed to properly “determine the scope and content of
the prior art” as required by the decision in Graham v. John Deere, 383 U.S.
1, 17 (1966). App. Br. 9. In particular, Appellant argues that the rejection
does not “identity any species or subgenus in Meng” and is “devoid of any
discussion of steps B, C and D” of the Graham analysis. Id. at 10 (emphasis
omitted). Appellant also argues that the Examiner’s rejection does not
consider “the number of variables which must be selected or modified, and
the nature and significance of the differences between the prior art and the
claimed invention.” Id.
Appellant further argues that because Meng discloses “very broad
ranges for CNT dimensions and wt. %,” the reference provides “absolutely
no guidance” regarding how one of ordinary skill in the art would arrive at
the specific dimensions of the claimed composite material. App. Br. 10—11.
In particular, Appellant contends that Meng’s disclosed CNT diameter range
of 0.5 to 50 nm is much broader than the claimed range of approximately 20
to 35 nm, and Meng’s disclosed CNT length range of 0.1 to 10,000 microns
is orders of magnitude larger than the claimed length of approximately 100
micrometers (microns). Id. at 11 (citing In re Baird, 16 F.3d 380, 381 (Fed.
Cir. 1994)).
Appellant also contends that Meng does not disclose any teachings
with regard to the mechanical strength of a composite material (App. Br. 10)
and although Meng discloses “polymer fibers,” the reference does not
disclose a “polymer resin,” as recited in claim 1 {id. at 12).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. On the record before us, we find that a
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preponderance of the evidence and the Examiner’s sound technical
reasoning support the determination that Meng discloses or suggests all of
the limitations of claim 1, and the conclusion that the reference would have
rendered the claim obvious. Meng, Abstract, || 19-21.
Appellant’s arguments regarding the Examiner not determining the
scope and content of the prior art and that the rejection does not identify
“any species or subgenus” (App. Br. 9-10) are misplaced. Contrary to what
Appellant argues, this is not a case involving claims containing a species and
the prior art disclosing a genus or subspecies. Rather, as the Examiner
correctly points out (Ans. 2—3), this case involves determining whether the
prior art discloses ranges overlapping or fully encompassing those claimed.
See In re Petersen, 315 F.3d 1325, 1329-1330 (Fed. Cir. 2003) (holding that
a prima facie case of obviousness “exists when the ranges of a claimed
composition overlap the ranges disclosed in the prior art” and when “the
claimed ranges are completely encompassed by the prior art, the
[obviousness] conclusion is even more compelling than in cases of mere
overlap.”).
As the Examiner finds (Non-Final Act. 7), Meng discloses a
composite material comprising polymer fibers, which correspond to the
recited “polymer resin,” and carbon nanotubes (CNTs); the CNTs having a
diameter of 0.5 nm to ~50 nm, which fully encompasses the claimed range
of 20 to 35 nm; and the CNTs having a length of 100 nm to 10 mm, which
completely encompasses the claimed length of about 100 microns. Meng,
Abstract, 120. As the Examiner further finds (Non-Final Act. 7—8), Meng
discloses that the CNTs comprise 80 to 20 wt. % of the composite (Meng |
21), which overlaps the claimed range of 5 to 40 wt. %, and the CNTs
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having a homogenous and isotropic distribution in the polymer resin (Meng
119 (disclosing “the CNTs 12 of the carbon nanotube network 16 are
disordered or in isotropic arrangement”)).
Appellant’s argument reveals no reversible error in the Examiner’s
factual findings and analysis in this regard.
Moreover, as the Examiner finds (Ans. 5), Appellant has not proffered
or directed us to sufficient evidence in the record to suggest the criticality of
the claimed CNT dimensions and content or that the claimed values achieve
unexpected results relative to the prior art. Peterson, 315 F.3d at 1330
(quoting In re Geisler, 116 F.3d 1465, 1469—70 (Fed. Cir. 1997)); see also
id. at 1330 (explaining that “the existence of overlapping or encompassing
ranges shifts the burden to the applicant to show that his invention would not
have been obvious”).
Appellant’s assertions at pages 9—10 of the Appeal Brief, without
more, are insufficient to rebut the Examiner’s findings in this regard.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
We do not find Appellant’s arguments regarding the In re Baird case
and that Meng discloses “very broad ranges for CNT dimensions and wt. %”
(App. Br. 10—11) persuasive of reversible error in the Examiner’s rejection
for the well-stated reasons provided by the Examiner at pages 5—10 of the
Answer. In particular, as the Examiner finds (Ans. 7—8), because the prior
art discloses compositions that include CNTs in amounts and having
physical dimensions overlapping or encompassing those claimed, one of
ordinary skill in the art would have had a reasonable expectation of success
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in selecting compositions having CNTs falling within the claimed
dimensions. Peterson, 315 F.3d at 1329.
As the Examiner further finds (Ans. 8), the facts of the In re Baird
case are not analogous to the facts of this case. As the Examiner correctly
points out (Ans. 8), in Baird there were 100 million compounds disclosed in
the prior art references and only 3 compounds (species) claimed. In re
Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (“A disclosure of millions of
compounds does not render obvious a claim to three compounds, particularly
when that disclosure indicates a preference leading away from the claimed
compounds.”).
In this case, however, in contrast to Baird, the prior art does not
disclose “millions of compounds” and the claims at issue are not limited to a
few claimed compounds or species. Rather, as the Examiner finds (Ans. 8),
the claims here are directed to a composition having a CNT content and
physical dimensions that meet and/or fall within certain claimed values.
Appellant’s argument that the prior art does not disclose any teachings
with regard to the mechanical strength of a composite material (App. Br. 10)
is not persuasive of reversible error because there are no such limitations
recited in the claims. In re Van Geuns, 988 F.2d 1181, 1184—85 (Fed. Cir.
1993). Indeed, as the Examiner finds (Ans. 3—4), there is nothing recited in
the claims that excludes the composite Meng discloses from falling within
the scope of claim 1.
We do not find Appellant’s assertion that the Examiner’s rejection
does not consider “the number of variables which must be selected or
modified, and the nature and significance of the differences between the
prior art and the claimed invention” (App. Br. 10) persuasive of reversible
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error for the reasons stated by the Examiner at page 4 of the Answer and
because it is conclusory. De Blauwe, 736 F.2d at 705. Appellant also does
not provide an adequate technical explanation or direct us to sufficient
evidence in the record to support it.
Finally, regarding Appellant’s argument that Meng fails to disclose
the recited “polymer resin” element of claim 1 (App. Br. 11—12), we do not
find this argument persuasive of reversible error based on the fact finding
and for the well-stated reasons provided by the Examiner at pages 8—9 of the
Answer, which stand unrebutted by Appellant. In particular, as the
Examiner finds (Ans. 9), Meng discloses a polymer composite 10
comprising polymer fibers 14 and CNTs 12; that the polymer fibers 14 and
CNTs 12 are adhered together; and the CNTs 12 are distributed in the
polymer fibers 14. Meng, Abstract, || 19—21, Fig. 1. Meng further
discloses that the “polymer fibers 14 can be polyaniline, polypyrrole,
polythiophene, polyacetylene, polyparaphenylene, poly phenylene vinylene,
or any combination thereof.” Id. 121.
Appellant does not provide a response to or otherwise rebut the
Examiner’s factual findings and reasoning in this regard as set forth at pages
8—9 of the Answer.
Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 5, 8,
10, and 12 under 35 U.S.C. § 103 as being unpatentable over Meng.
Rejections 2, 4, and 5
Appellant does not present any new or additional substantive
arguments in response to the Examiner’s Rejections 2, 4, and 5, stated
above.
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Rather, Appellant largely repeats and relies on principally the same
arguments previously presented in response to the Examiner’s Rejection 1
regarding claim 1. Compare App. Br. 9—12 (argument in response to
Rejection 1) with App. Br. 15—19 (argument in response to Rejection 3); see
also App. Br. 19-22 (argument in response to Rejection 4); App. Br. 22—24
(argument in response to Rejection 5).
Accordingly, based on the findings and technical reasoning provided
by the Examiner in the Answer and Non-Final Office Action, which we
adopt as our own, and for principally the same reasons discussed above for
affirming Rejection 1, we affirm the Examiner’s Rejections 2, 4, and 5.
Rejection 3
In response to the Examiner’s Rejection 3, stated above, Appellant
presents arguments for the patentability of claim 1 only. App. Br. 15. We
select claim 1 as representative and claims 2—3, 5, 8—10, and 12 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that the combination of Dupire and The
Free Dictionary suggests a polymer composite satisfying all of the
limitations of claim 1 and thus, would have rendered claim 1 obvious. Non-
Final Act. 13—14 (citing Dupire, Abstract, col. 1,11. 4—8, col. 2,11. 33—34,
45—55, col. 4,11. 33—36, col. 6,11. 20—32; The Free Dictionary, pp. 1—2).
In particular, the Examiner finds that Dupire discloses a polymer
composite material comprising polyether ether ketone (PEEK), i.e., a
polymer resin, and CNTs in the amount of less than 50 wt. %, overlapping
the claimed range of 5 to 40 wt. %. Non-Final Act. 13 (citing Dupire,
Abstract, col. 1,11. 4—8, col. 2,11. 45—55, col. 4,11. 33—36). The Examiner
further finds (Non-Final Act. 13) that Dupire discloses the CNTs having a
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diameter of “1—50 nm,” overlapping the claimed range of 20 to 35 nm, and a
length of “lpm or more,” encompassing the recited length of approximately
100 microns. Dupire, col. 4,11. 4—8.
The Examiner also finds (Non-Final Act. 13—14) Dupire discloses a
process for mixing the polymer and CNTs and that the polymer and CNTs
are “well dispersed,” which suggests the CNTs are homogeneously and
isotropically distributed in the polymer resin, as required by the claim.
Dupire, col. 2,11. 33—34, col. 6,11. 20-32.
Appellant argues that the Examiner’s rejection should be reversed for
principally the same reasons previously presented in response to the
Examiner’s Rejection 1 regarding claim 1. See App. Br. 15—17.
We do not find these arguments persuasive for essentially the same
reasons discussed above for affirming Rejection 1.
Appellant presents additional arguments in response to the Examiner’s
Rejection 3. App. Br. 17—19. In particular, Appellant argues that the
Examiner’s rejection should be reversed because: (1) “Dupire . . . requires
that the CNTs be oriented in the same direction through a heating process”
(App. Br. 17); (2) Dupire “does not teach or suggest the claim feature of
‘homogenous and isotropic distribution’” (id. at 18); (3) Dupire “teaches
away from the invention” (id. at 18); and (4) there is no reason why one of
ordinary skill in the art would look to Dupire “to provide meaningful
teachings about a stronger reinforced polymer” (id. at 19).
We do not find Appellant’s arguments persuasive of reversible error
based on the fact finding and reasoning provided by the Examiner at pages
13—14 of the Non-Final Action and pages 20—21 of the Answer. Rather, on
the record before us, we find that a preponderance of the evidence and the
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Examiner’s sound technical reasoning support the determination that the
combination of Dupire and The Free Dictionary suggests all of the
limitations of claim 1, and the conclusion that the combination would have
rendered the claim obvious. Dupire, Abstract, col. 1,11. 4—8, col. 2,11. 33—
34, 45—55, col. 4,11. 33—36, col. 6,11. 20—32; The Free Dictionary, pp. 1—2.
In particular, as the Examiner finds (Non-Final Act. 14), although
Dupire discloses that the CNTs may be subsequently stretched and oriented
through a subsequent heating process (Dupire, col. 2,11. 35—39), the
reference also discloses a stable intermediate composite material comprising
polymer resin and unoriented CNTs before stretching (Dupire, Abstract, col.
1,11. ^N8, col. 2,11. 33-34, 45-55, col. 4,11. 33-36, col. 6,11. 20-32). See In
re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the disclosures in a prior art
reference “must be evaluated for what they fairly teach one of ordinary skill
in the art.”).
As the Examiner further finds (Non-Final Act. 14; Ans. 20—21),
Dupire discloses that the polymer resin and CNTs are mixed to form a “well
dispersed” composition, and suggests the well dispersed composition before
stretching would possess the homogenous and isotropic distribution of the
CNTs, as claimed. Dupire, col. 2,11. 33—34, col. 6,11. 20-32. Appellant’s
argument reveals no reversible error in the Examiner’s findings and analysis
in this regard.
Appellant’s teaching away argument is not persuasive because, as the
Examiner notes (Ans. 22), claim 1 does not recite or require the composition
having a certain “mechanical strength.” Van Geuns, 988 F.2d at 1184
(“limitations are not to be read into the claims from the specification”).
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Moreover, the fact that Dupire may discuss that randomizing of the
orientation of the fibres “reduces the mechanical strength” of the
composition (Dupire, col. 2,11. 14—16), without more, does not necessarily
establish that the reference teaches away from the claimed invention. See,
e.g., In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994) (“[a] known or obvious
composition does not become patentable simply because it has been
described as somewhat inferior to some other product for the same use”).
We do not find Appellant’s argument that there is no reason why one
of ordinary skill in the art would look to Dupire “to provide meaningful
teachings about a stronger reinforced polymer” (App. Br. 19) persuasive of
reversible error in the Examiner’s rejection because it is conclusory, and
Appellant also does not provide an adequate technical explanation to support
it. De Blauwe, 736 F.2d at 705.
Also, as the Examiner finds (Ans. 22) and previously discussed above,
claim 1 does not recite or require a “stronger reinforced polymer” and
Dupire does disclose a stable intermediate composite material comprising
polymer resin and unoriented CNTs before stretching, which falls within the
scope of the claims.
DECISION/ORDER
The Examiner’s rejections of claims 1—3, 5, 7—10, and 12 are
affirmed.
It is ordered that the Examiner’s decision is affirmed.
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
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