Ex Parte Zhamu et al

Patent Trial and Appeal Board

Oct 23, 2012

11899008 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/899,008 09/04/2007 Aruna Zhamu 6914
7590 10/23/2012
Bor Z. Jang
9436 Parkside Drive
Centerville, OH 45458
EXAMINER
SCHIFFMAN, BENJAMIN A
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
10/23/2012 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 ARUNA ZHAMU, JUNJUN SHI,
JIUSHENG GUO, and BOR Z. JANG
____________

Appeal 2011-005131
Application 11/899,008
Technology Center 1700
____________

Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-22. Claim 1 is
illustrative:
1. A method for recompressing expanded or exfoliated graphite to
produce a less anisotropic, flexible graphite foil having a thickness-direction
electrical conductivity no less than 15 S/cm, said method comprising:

a) providing a mixture of expanded or exfoliated graphite flakes and
particles of non-expandable graphite or carbon, wherein said non-
expandable graphite or carbon particles serve as an isotropy-promoting agent
and are in the amount of between about 3% and 70% by weight based on the
total weight of said particles and said exfoliated graphite;
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b) compressing said mixture in at least a first direction to a pressure
within the range of from about 0.04 MPa to about 350 MPa into a first
cohered mixture; and

c) compressing said first cohered mixture in a second direction,
different from the first direction, to a pressure sufficient to produce said
flexible graphite foil having a bulk density within the range of from about
0.1 g/cm3 to about 2.0 g/cm3.

The Examiner relies upon the following references as evidence of
obviousness:
Mercuri US2002/0164483 A1 Nov. 7, 2002
Egami US 2005/0116376 A1 Jun. 2, 2005
Zhamu (SN 11/800,730) US 2008/0279710 A1 Nov. 13, 2008

Appellants’ claimed invention is directed to a method for recom-
pressing expanded graphite in order to produce a less anisotropic flexible
graphite foil having the recited electro conductivity in the thickness
direction. The method entails, inter alia, compressing a mixture of
expanded graphite flakes and particles of non-expandable carbon. The non-
expandable carbon particles serve as an isotropy-promoting agent, i.e., it
reduces the anisotropic nature of the graphite foil.
Appealed claims 1-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mercuri in view of Egami. Claims 1, 9, and 14
stand provisionally rejected on the grounds of non-statutory obviousness-
type double patenting over claims 1, 14, and 31 of co-pending application
US Serial Number 11/800,730 in view of Mercuri.1

1 Appellants have not substantively challenged the Examiner’s provisional
rejection but submit that “[a]n appropriate assignment and a new terminal
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Appellants have not separately argued any particular claim on appeal.
Accordingly, all of the appealed claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we agree with the Examiner that Appellants have
not rebutted the Examiner’s rationale in support of the conclusion of
obviousness. Accordingly, we will sustain the Examiner’s rejection for
essentially those reasons expressed in the Answer, and we add the following
primarily for emphasis.
There is no dispute that Mercuri, like Appellants, discloses controlling
the anisotropic characteristics of a flexible graphite foil by compressing
expanded graphite to produce a foil having a thickness-direction
conductivity of 70 S/m, nor do Appellants dispute the Examiner’s findings
with respect to the Mercuri disclosure set forth in the Answer in the
paragraph bridging pages 4-5.
As acknowledged by the Examiner, Mercuri does not provide a
mixture of expanded graphite and particles of non-expandable carbon, as
presently claimed. However, it is the Examiner’s position that Egami
evidences the obviousness of adding non-expandable carbon particles to the
expanded graphite flakes of Mercuri “in order to increase the conductivity in
all direction [sic, directions] and thus increase the isotropy of the resulting
foil” (Ans. 8, second para.). Appellants have not refuted the Examiner’s
reasoning set forth at page 9 of the Answer that the addition of non-
expanded carbon particles to the expanded graphite of Mercuri would

disclaimer will be filed in due course” (Prin. Br. 10, first para.).
Accordingly, we will summarily affirm the Examiner’s provisional rejection.
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increase the conductivity of the article in all directions and, thereby, result in
an increase in the isotropy of the anisotropic foil. Indeed, Appellants
acknowledge that the addition of carbon black to a composition comprising
expanded graphite would naturally increase the conductivity of the material
(Prin. Br. 17, second para.).
The principal argument advanced by Appellants is that the graphite
foil of Mercuri does not include the resin of Egami, and that “in the presence
of the resin in the Egami process, the conductive particles cannot effectively
orient the expanded or exfoliated graphite flakes and thereby reduce the
anisotropy” (Prin. Br. 11, first para.). Appellants submit that “the liquid
resin used in the plastic molding process (e.g., injection molding) of Egami
could not assist in controlling the orientation of expanded graphite flakes”
(Prin. Br. 12, first para.). Appellants further state that “[t]here is no
plausible theory or concept in the field of plastic composite processing to
suggest that carbon black could perform such a function in a resin fluid flow
state inside a molding machine” (id.).
The flaw in Appellants’ argument is that it does not address the thrust
of the Examiner’s rejection. As explained by the Examiner, the rejection is
not premised upon modifying the foil of Mercuri by adding resin and non-
expandable carbon. Rather, as set forth above, the Examiner reasons that it
would have been obvious for one of ordinary skill in the art to add non-
expandable carbon to the expanded graphite of Mercuri in order to increase
conductivity in all directions and reduce the anisotropic characteristics of the
foil, bearing in mind that it is a goal of Mercuri to provide a finished
graphite article having a predetermined, desired anisotropic ratio. While
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Appellants point out that Mercuri teaches other ways of controlling the
anisotropic ratio, Appellants have presented no argument for why it would
have been nonobvious to one of ordinary skill in the art to add non-
expandable carbon to achieve such control. In the absence of such
argument, the Examiner’s position stands unrebutted.
Appellants also argue that “Egami does not teach combined
operations of compression in at least two directions, or a combination of a
compression operation and a subsequent shaping operation” (Prin. Br. 12,
second para.). However, as noted by the Examiner, Egami is not relied upon
for this feature.
Appellants also submit that “the data summarized in Table 1
(Example 1) of the instant application provides one of the many
unambiguous evidences to prove that the non-expandable graphite or carbon
particles are very effective in promoting isotropy and enhancing thickness-
direction conductivity” (Prin. Br. 15, last para.). However, we agree with
the Examiner that Appellants have not established that the Specification
results would have been considered truly unexpected by one of ordinary skill
in the art. In re Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir. 1986); In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1072). Moreover, Appellants have not
refuted the Examiner’s position that the results appear to be expected
inasmuch as the addition of non-expandable carbon would be expected to
increase the thickness-direction conductivity as well as the isotropy of the
article. It is well-settled that just as unexpected results are evidence of
nonobviousness, expected results are evidence of obviousness. The
Examiner also notes that Appellants have “submitted no evidence,
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commensurate in scope with the claims, to suggest that the increase in
isotropy is a result of the orientation of the expanded graphite” (Ans. 10,
first para.).
Appellants maintain in the Reply Brief that the Examiner does not
address the point that carbon black is essentially a conductive filler in
Egami’s resin molding, whereas the carbon black of the claimed graphite
foil modifies the orientation of the graphene layers (page 1). However, this
argument misses the point of the Examiner’s rejection, namely, that one of
ordinary skill in the art would have found it obvious to use a mixture of
expanded graphite and non-expanded carbon, as taught by Egami, in order to
controllably increase the conductivity and isotropy of Mercuri’s foil.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner 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)(1)(iv).
AFFIRMED

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