Ex Parte Sugiura et alDownload PDFPatent Trial and Appeal BoardAug 9, 201813377289 (P.T.A.B. Aug. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/377,289 12/09/2011 Naoki Sugiura 22850 7590 08/13/2018 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 390733US99PCT 2848 EXAMINER WORRELL, KEVIN ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 08/13/2018 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): OBLONPAT@OBLON.COM tfarrell@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NAOKI SUGIURA, TAKAHIRO OKUY A, HIROSHI HASHIMOTO, ISAO OOKI, HIROKO MATSUMURA, MASAHIRO HATA, KOUKI W AKABA YA, and AKITO HATA Y AMA Appeal2017-009893 Application 13/377 ,289 Technology Center 1700 Before TERRY J. OWENS, KAREN M. HASTINGS, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request our review under 35 U.S.C. § 134(a) of the Examiner's decision to finally reject claims 11-27. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Mitsubishi Rayon Co., LTD as the real party in interest. Appeal Brief filed September 9, 2016 ("App. Br."), 1. Appeal2017-009893 Application 13/377 ,289 STATEMENT OF THE CASE Appellants claim a carbon fiber bundle formed of single carbon fibers. Independent claim 11 illustrates the subject matter on appeal and is reproduced below: 11. A carbon fiber bundle formed of single carbon fibers, wherein ( 1) each single carbon fiber has no uneven surface structure that has a length of 0.6 µm or more and that extends in the longitudinal direction of the single carbon fiber, (2) each single carbon fiber has an uneven structure in which the difference in height (Rp-v) between a highest portion and a lowest portion of the surface of the single fiber is 5 to 25 nm and in which an average roughness Ra is 2 to 6 nm, (3) each single carbon fiber has a cross section in which the ratio of the major axis to the minor axis (major axis/minor axis) is 1.00 to 1.01, ( 4) each single carbon fiber has a mass per unit length of 0.030 to 0.042 mg/m, ( 5) the carbon fiber bundle has a strand strength of 5900 MPa or more, ( 6) the carbon fiber bundle has a strand elastic modulus measured by the ASTM method of 250 to 380 GPa, and (7) the carbon fiber bundle has a knot tenacity of 900 N/mm2 or more. App. Br. 15 (Claims Appendix). Independent claim 12 differs from claim 11 by reciting in paragraph (2) that the uneven surface structure in each single carbon fiber has a length of 300 nm or less. Otherwise, independent claims 11 and 12 are identical. The Examiner sets forth the following rejections in the Final Office Action entered February 12, 2016 ("Final Act."), and maintains the 2 Appeal2017-009893 Application 13/377 ,289 rejections in the Examiner's Answer entered February 9, 2017 ("Ans."): 2 I. Claims 11, 13, and 24--27 under 35 U.S.C. § 103(a) as unpatentable over Sugiura et al. (JP 2004/197230, published July 15, 2004, hereinafter "Sugiura") in view of Tanaka et al. (JP 2006-183159, published July 13, 2006, hereinafter "Tanaka"); II. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Sugiura in view of Tanaka and Tango et al. (JP 59-187625, published October 24, 1984, hereinafter "Tango"); III. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Sugiura in view of Tanaka, Tango, Asai et al. (US 4,603,157, issued July 29, 1986, hereinafter "Asai") and Tada et al. (US4,832,932, issued May 23, 1989 hereinafter "Tada")· ' ' IV. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Sugiura in view of Tanaka, Tango, and Okuya et al. (JP 2004-211240, published July 29, 2004, hereinafter "Okuya"); V. Claims 16-22 under 35 U.S.C. § 103(a) as unpatentable over Sugiura in view of Tanaka, Tango, and Sumida et al. (US 5,298,576, issued March 29, 1994, hereinafter "Sumida"); and VI. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Sugiura in view of Tanaka, Tango, and Metter et al. (US 5,858,486, issued January 12, 1999, hereinafter "Metter"). 2 Appellants do not contest the Examiner's reliance on English translations of Tanaka, Sugiura, Tango, and Okuya. Therefore, citations to these references in this Decision refer to the English translations. 3 Appeal2017-009893 Application 13/377 ,289 DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants' contentions, we affirm the Examiner's rejections of claims 11-27 under 35 U.S.C. § 103(a) for the reasons set forth in the Final Action, the Answer, and below. We review appealed rejections for reversible error based on the arguments and evidence Appellants provide for each issue Appellants identify. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in 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, "it has long been the Board's practice to require an applicant to identify the alleged error in the [E]xaminer's rejections.")). Claims 11 and 12 Appellants argue claims 11 and 12 together on the basis of limitations common to both claims. App. Br. 4--11. We accordingly select claim 11 as representative, and decide the appeal as to claims 11 and 12 based on claim 11 alone. 37 C.F.R. § 4I.37(c)(l)(iv). Sugiura discloses a carbon fiber strand ( carbon fiber bundle) composed of single carbon fibers that have scarcely or no wrinkles in their surface extending in the longitudinal direction, such that the cross section of each single fiber is a near perfect circle. Sugiura Abstract, ,r 50. Sugiura discloses that the difference in height between the highest part and the lowest part of each single carbon fiber is less than 40 nm, preferably 30 nm or less, and the major axis/minor axis ratio in the fiber cross section is 1.00- 1.02. Id. at Abstract, ,r 9. Sugiura discloses that each single carbon fiber 4 Appeal2017-009893 Application 13/377 ,289 weighs 0.035---0.060 mg/m, has a strand strength of 4900 MPa or more, and has a modulus of elasticity of 230-370 GP A. Id. at Abstract, ,r 50. Sugiura discloses producing the carbon fiber strand by first forming carbon fiber precursors, and then preparing the carbon fiber strand or bundle from the carbon fiber precursors. Id. ,r,r 39-42. Sugiura discloses forming the carbon fiber precursors by dissolving an acrylonitrile polymer in dimethylacetamide, spinning the solution through a spinneret, introducing the discharge into a coagulation bath containing an aqueous solution of dimethylacetamide, deliquoring (washing) the coagulation thread in a rinse tank, extending the thread 3.5 times, introducing the resulting acrylic fibers into an oil bath, and extending the fibers three times with a heating roller, to obtain precursor fibers. Id. ,r 39. Sugiura discloses producing a carbon fiber strand or bundle by arranging the precursor fibers into a bundle and introducing the bundle into a furnace, spraying the bundles with an oxidizing gas such as air heated to 200-300QC, introducing the oxidized fiber bundle into a carbonization furnace having an inert atmosphere and heated to a temperature of I200- 2000QC, and adhering an aqueous urethane resin sizing compound to the resulting carbon fiber bundle. Id. ,r,r 40, 42. The Examiner finds that Sugiura does not explicitly disclose that the single carbon fibers have an average roughness of 2 to 6 nm, and does not explicitly disclose that the carbon fiber bundle has a knot tenacity of 900 N/mm2 or more. Final Act. 3. With respect to the average roughness, the Examiner finds that Tanaka discloses carbon fibers having an average surface roughness of less than or equal to 8 nm, which results in a narrow elastic modulus distribution and prevents unevenness in firing. Final Act. 3 5 Appeal2017-009893 Application 13/377 ,289 ( citing Tanaka Abstract, ,r 13 ). The Examiner determines that one of ordinary skill in the art would have been led at the time of Appellants' invention to modify the single carbon fibers disclosed in Sugiura to have an average roughness as disclosed in Tanka so as to avoid unevenness in firing and achieve a narrow elastic modulus distribution. Final Act. 3 ( citing Tanaka Abstract, ,r 13). The Examiner further finds that because the processes for producing carbon fiber precursors and a carbon fiber bundle disclosed in Sugiura are the same or substantially the same as the respective processes described in Appellants' Specification, Sugiura's single carbon fibers and carbon fiber bundle would have the same properties-including the same average roughness and knot tenacity, respectively-as the single carbon fibers and carbon fiber bundle recited in claim 11. Final Act. 3--4 ( citing Sugiura ,r,r 14, 17, 21, 22, 26-44; Spec. ,r,r 26-44); see also Ans. 8-9. Appellants argue that the mass per unit length of the carbon fiber bundles produced in Sugiura's experimental examples is outside the range of 0.030 to 0.042 mg/m recited in claim 11. App. Br. 6-7. We note initially that claim 11 recites that each single carbon fiber has a mass per unit length of 0.030 to 0.042 mg/m, rather than reciting that the carbon fiber bundle has a mass per unit length of 0.030 to 0.042 mg/m as implied by Appellants' arguments. Rather, as discussed above, Sugiura more generally discloses that each single fiber weighs ( or has a mass per unit length of) 0.035---0.060 mg/m, which overlaps the range of 0.030 to 0.042 mg/m recited in claim 11, rendering the recited range prima facie obvious. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that 6 Appeal2017-009893 Application 13/377 ,289 even a slight overlap in range establishes a prima facie case of obviousness.") ( emphasis omitted). Because Appellants do not provide persuasive evidence demonstrating the criticality of the recited range, Appellants' arguments are unpersuasive of reversible error. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (Indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.). Appellants argue that Sugiura does not disclosure or suggest a carbon fiber bundle having a strand strength of 5900 MPa or more, and Appellants assert that the highest strand strength described and exemplified in Sugiura is 5000 MP a. App. Br. 7 ( citing Sugiura Abstract, ,r 14, and Table 1 ). However, Appellants' arguments again do not take into consideration the entirety of Sugiura's disclosures. As discussed above, paragraph 50 of Sugiura explicitly states that each single fiber has a strand strength of 4900 MPa or more, which encompasses the range of 5900 MPa or more recited in claim 11, rendering the recited range prima facie obvious. Peterson, 315 F.3d at 1329--30 ("Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap.") Because Appellants do not direct us to any persuasive evidence demonstrating the criticality of the strand strength range recited in claim 11, Appellants' arguments are unpersuasive of reversible error. Woodruff, 919 F.2d at 1578. 7 Appeal2017-009893 Application 13/377 ,289 Appellants argue that the "the method of making the claimed carbon fiber bundle is different from the method described by Sugiura," and those differences "preclude[] Sugiura from producing a carbon fiber bundle having a strand strength of 5900 MPa." App. Br. 7. Appellants assert that their invention utilizes dimethylformamide as a solvent in a coagulation bath used during preparation of carbon fiber precursors, while Sugiura describes using dimethylacetamide for this purpose. App. Br. 7-8 ( citing Spec. ,r 70; Sugiura ,r 39). Appellants further argue that their Specification describes pre-drawing coagulated fibers in an aqueous solution containing solvents before washing and post-drawing, but in contrast, Sugiura describes simultaneously washing and drawing coagulated fibers in a water bath. App. Br. 8 (citing Spec. ,r,r 28-30, 70; Sugiura ,r 39). However, with respect to the solvent utilized in the coagulation bath, the paragraph of the Specification cited by Appellants (Spec. ,r 70) is an experimental example describing one non-limiting embodiment of the process for producing carbon fiber precursors according to Appellants' invention. The Specification's more general description of producing carbon fiber precursors indicates that the coagulation bath is "a solution mixture of an organic solvent and water." Spec. ,r 28. Appellants do not direct us to any disclosure in the Specification indicating that the organic solvent used in the coagulation bath must be-is limited to---- dimethylformamide. App. Br. 7-8. Accordingly, the aqueous solution of dimethylacetamide used in the coagulation bath disclosed in Sugiura corresponds to "a solution mixture of an organic solvent and water" as described in Appellants' Specification. Spec. ,r 28. In addition, Appellants' Specification indicates that a step of pre- 8 Appeal2017-009893 Application 13/377 ,289 drawing coagulated fibers before washing and post-drawing is not required during the process of forming carbon fiber precursors according to Appellants' invention, and is merely an optional step in the process. Spec. ,r 28 ("Note that, before the coagulated fiber that has been taken out [of the coagulation bath] is washed, if drawing is performed in the pre-drawing tank that contains a solvent whose concentration is lower than in congealed liquid and whose temperature is 25 higher than that of congealed liquid, a fibril structure can be formed.") ( emphasis added). Appellants' arguments do not identify any material difference between the processes for producing carbon fiber precursors and a carbon fiber bundle disclosed in Sugiura and the respective processes described in Appellants' Specification. App. Br. 7-8. Accordingly, Appellants' arguments do not establish that the method for producing a carbon fiber bundle disclosed in Sugiura would not produce a carbon fiber bundle having a strand strength of 5900 MPa as recited in claim 11. In addition, as discussed above, the strand strength of 4900 MPa or more disclosed in Sugiura encompasses the range of 5900 MPa or more recited in claim 11, rendering the recited range prima facie obvious. Appellants argue that the surface roughness disclosed in Tanaka refers to the surface roughness of an oil coating layer on a precursor fiber, and does not refer to the surface roughness of the precursor fiber itself. App. Br. 8-9. However, as discussed above, the Examiner does not rely solely on Tanaka to support the finding that the single carbon fibers disclosed in Sugiura would have the same average roughness as the single carbon fibers recited in claim 11. Rather, the Examiner also finds that because the processes for producing carbon fiber precursors and a carbon fiber bundle 9 Appeal2017-009893 Application 13/377 ,289 disclosed in Sugiura are the same or substantially the same as the respective processes disclosed in Appellants' Specification, the single carbon fibers disclosed in Sugiura would have the same average roughness as the single carbon fibers recited in claim 11. Final Act. 3--4 ( citing Sugiura ,r,r 21, 22, 39, 40; and Spec. ,r,r 26-44); see also Ans. 8-9. Like Sugiura, Appellants' Specification describes forming carbon fiber precursors, and then producing a carbon fiber bundle from the carbon fiber precursors. Spec. ,r,r 27--44. Similar to the process disclosed in Sigura discussed above, the Specification describes forming carbon fiber precursors by dissolving an acrylonitrile-based polymer in an organic solvent, spinning the solution ( or dope), introducing the discharge into a mixture of an organic solvent and water ( coagulation bath), removing coagulated fibers from the bath, optionally pre-drawing the fibers, washing the fibers, drawing the fibers in hot water, attaching an oil solution to the fibers, passing the fibers through a plurality of heated rolls, and drawing to obtain precursor fibers. Spec. ,r,r 27-31. Also similar to the process disclosed in Sugiura discussed above, Appellants' Specification describes producing a carbon fiber bundle from the precursor fibers by heating the precursor fibers in an oven (stabilizing), passing the stabilized fibers through carbonization furnaces, subjecting the resulting carbon fiber bundle to a surface oxidization treatment such as air oxidation, and applying a sizing agent such as a urethane-modified epoxy resin to the surface of the carbon fiber. Spec. ,r,r 32--44. Due to the similarities in the processes for producing carbon fiber precursors and a carbon fiber bundle disclosed in Sugiura and Appellants' Specification, the Examiner has a reasonable basis for finding that the single 10 Appeal2017-009893 Application 13/377 ,289 carbon fibers and carbon fiber bundle disclosed in Sugiura would have the same properties as the single carbon fibers and carbon fiber bundle recited in claim 11. PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (Concept of inherency, when applied to obviousness, is present "when the limitation at issue is the 'natural result' of the combination of prior art elements."); Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) ("If Pereira discloses the very same methods, then the particular benefits must naturally flow from those methods even if not recognized as benefits at the time of Pereira's disclosure."); In re Dillon, 919 F .2d 688, 693 (Fed. Cir. 1990) ( en bane) ("In particular, the statement [in In re Wright] that a prima facie obviousness rejection is not supported if no reference shows or suggests the newly-discovered properties and results of a claimed structure is not the law.") (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir. 1988) (footnote omitted)). On this appeal record, Appellants do not direct us to any evidence demonstrating that the single carbon fibers disclosed in Sugiura would not have an average roughness as recited in claim 11. Cf In re Best, 562 F.2d 1252, 1255 (CCPA 1977). ("Where ... the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.") ( citation omitted). Appellants' arguments are therefore unpersuasive of reversible error. Appellants argue that "the difference in height (Rp-v) between the highest portion and the lowest portion in Examples 1---6 of Tanaka are in a range of 37 to 77 nm which are larger than the values (i.e., 5 to 25 nm) 11 Appeal2017-009893 Application 13/377 ,289 specified in Claims 11 and 12." App. Br. 9. However, as discussed above, the Examiner finds that Sugiura-rather than Tanaka----discloses that the difference in height between the highest part and the lowest part of each single carbon fiber described in the reference is less than 40 nm, preferably 30 nm or less, encompassing the range of 5 to 25 nm recited in claim 11, thus rendering the recited range prima facie obvious. Peterson, 315 F.3d at 1329. Appellants argue that Example 2 and Comparative Examples 6, 7, and 8 of their Specification demonstrate that "it is not possible to obtain a carbon fiber bundle of the present application without adopting suitable stabilization and carbonization conditions." App. Br. 9. Appellants contend that because "Tanaka provides no detailed description about the carbonization conditions," one of ordinary skill in the art "would not arrive at the carbon fiber bundle of the present application." Id. However, as discussed above, Sugiura-rather than Tanaka- describes carbonizing fiber bundles to produce carbon fiber bundles. Appellants do not direct us to evidence demonstrating that the carbonizing conditions disclosed in Sugiura would not produce a carbon fiber bundle as recited in claim 11. Appellants' arguments are therefore unpersuasive of reversible error. Appellants argue that their Specification teaches that suitable spinning conditions are required to obtain carbon fiber precursors having a small uneven surface structure, "while Tango provides no technical information regarding such suitable spinning conditions." App. Br. 10. Appellants contend that Tango does not disclose specific conditions for manufacturing the acrylic fiber disclosed in the reference, and does not disclose producing a 12 Appeal2017-009893 Application 13/377 ,289 carbon fiber from the acrylic fiber. Id. Appellants assert that "the average roughness (Ra) in Tango is on the order of micrometers, which is much larger than the average roughness (Ra) of nanometers as specified in Claims 11 and 12 of the present application." Id. However, the Examiner relies on Tango to address the limitation in claim 12-which is not present in claim I I-that specifies the length of the uneven structure (300 nm or less) of each single carbon fiber in which the difference in height (Rp-v) between a highest portion and a lowest portion of the surface of the single fiber is 5 to 25 nm, and in which an average roughness Ra is 2 to 6 nm. Final Act. 4. Thus, the Examiner does not rely on Tango for disclosing the subject matter Appellants assert is missing from Tango. As discussed above, Sugiura describes a process for forming carbon fiber precursors (including suitable spinning conditions), and a process for producing a carbon fiber bundle from the carbon fiber precursors. As also discussed above, the Examiner has a reasonable basis for finding that the single carbon fibers disclosed in Sugiura would have the same properties as the single carbon fibers recited in claim 11, including the same average roughness. Appellants do not direct us to any evidence demonstrating that the single carbon fibers disclosed in Sugiura would not have an average roughness as recited in claim 11. We accordingly sustain the Examiner's rejection of claims 11 and 12 under 35 U.S.C. § I03(a). Claims 13-27 Appellants argue that the additional references applied in the rejections of claims 13-27 fail to cure the deficiencies of Sugiura, Tanaka, 13 Appeal2017-009893 Application 13/377 ,289 and Tango. App. Br. 11. Because we are unpersuaded of reversible error in the Examiner's rejection of claim 11 for the reasons discussed above, this argument is without merit. Appellants further assert that the prior art references applied in the rejections of claims 13-27 do not disclose the limitations of these claims. App. Br. 11-14. However, Appellants' statements do not constitute substantive arguments as to the separate patentability of these claims because Appellants merely assert, without further explanation, that the applied prior art does not disclose the claimed subject matter. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2-15, 17-24, and 31-34."). We accordingly sustain the Examiner's rejection of claims 13-27 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner's rejections of claims 11-27 under 35 U.S.C. § 103(a). 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 14 Copy with citationCopy as parenthetical citation