Panasonic Intellectual Property Management Co., Ltd.Download PDFPatent Trials and Appeals BoardMar 30, 20212020002583 (P.T.A.B. Mar. 30, 2021) Copy Citation 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. 15/206,262 07/09/2016 Naomi NISHIKI P0460678US01K 1233 42212 7590 03/30/2021 Panasonic IP Management Co., Ltd. IP Management Department, Applications Promotion 7F OBP Panasonic Tower, 2-1-61 Shiromi, Chuo-ku, Osaka, 540-6207 JAPAN EXAMINER GUO, TONG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/30/2021 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): admin@culpepperip.com ppc.docket@ml.jp.panasonic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NAOMI NISHIKI, KAZUHIRO NISHIKAWA, HIDETOSHI KITAURA, ATSUSHI TANAKA, and KIMIAKI NAKAYA ____________ Appeal 2020-002583 Application 15/206,262 Technology Center 1700 ____________ Before GEORGE C. BEST, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, and 4 of Application 15/206,262. Final Act. (June 25, 2019). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Panasonic Intellectual Property Management Co., Ltd. as the real party in interest. Appeal Br. 3. Appeal 2020-002583 Application 15/206,262 2 I. BACKGROUND The ’262 Application describes methods for making graphite plates that can be used as a heat-conductive material, e.g., in electronic devices. Spec. 1. Graphite plates made by the methods described in the Specification are said not to require heat-conductive pastes for attachment of other components of the electronic device. Id. at 2. The claims at issue in this appeal, however, are directed to the graphite plates themselves and not to the manufacturing method. Claim 1 is representative of the ’262 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A graphite plate, having a surface roughness Ra from 16.3 µm to less than 24.7 µm, at a surface-unevenness variation of 0.04% to 0.09% in any span 80 mm long within the surface of the graphite plate. Appeal Br. 16. II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1, 3, and 4 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Murakami2 as evidenced by Nishikawa.3 Final Act. 3. 2. Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103 as unpatentable over Murakami as evidenced by Nishikawa. Final Act. 3. 2 US 4,954,193, issued September 4, 1990. 3 US 2010/0062220 A1, published March 11, 2010. Appeal 2020-002583 Application 15/206,262 3 III. DISCUSSION Appellant stipulates the claims 3 and 4 stand or fall with claim 1, from which they depend. Appeal Br. 9, 12. Accordingly, we limit our discussion to claim 1. A. Rejection of claims 1, 3, and 4 as anticipated by Murakami as evidenced by Nishikawa In rejecting claim 1, the Examiner found that Murakami describes a process for making a graphite plate that uses the same materials and the subjects them to the same process as described in the ’262 Application. Final Act. 3–5. Based on this finding, the Examiner finds that the graphite film produced by Murakami’s method will meet the surface roughness and surface-unevenness variation limitations of claim 1.4 Id. at 5; see also In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, 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.”). Appellant argues that the Examiner erred in finding that the ’262 Application’s method and materials are the same as those described in Murakami. Appeal Br. 10–12. We are not persuaded that Appellant’s method differs substantially from that described in Murakami. 4 The Examiner relies upon Nishikawa as evidence that the properties recited in dependent claims 3 and 4 are result effective variables with respect to the manufacturing process used to produce the graphite plate. Final Act. 6. Appeal 2020-002583 Application 15/206,262 4 According to Appellant, graphite plates with the surface properties recited in claim 1 can be made in the following way: (1) subject the polyamide film to a thermal treatment at 1000°C in an inert atmosphere and (2) hot press the resulting sheet at a temperature in excess of 3000°C and a pressure between 10 kg/cm² and 100 kg/cm². Spec. 12–13 (Examples 1–3). As Appellant notes, see Appeal Br. 11, Murakami describes two methods for making graphite sheets: a one-step process and a two-step process. See Murakami 7:4–68. Murakami also describes an optional thermal decomposition step that may be used with either of these processes. Id., 7:32–40. For the purpose of our analysis, we need only discuss the one-step process in combination with the optional thermal decomposition step. Example 4 of Murakami illustrate such a process. See id., 12:48–13:20. In this Example, polyimide films were subjected to a low-temperature thermal decomposition treatment at 1000°C for one hour. The thermally treated films were then subjected to a high-temperature pressing operation at temperatures of 2200°C or greater and a pressure of 20 kg/cm². Id. (Table 4). Murakami, therefore, describes a process that is substantially the same as that described in the ’262 Application. Thus, the Examiner correctly presumed that Murakami’s production process results in graphite plates with the surface properties recited in claim 1. Appellant also argues, in the alternative, that the rejection of claim 1 should be reversed even if the Examiner correctly found that Murakami and the ’262 Application describe the same materials undergoing the same process. Appeal Br. 9–10. Appellant argues that Murakami does not describe either expressly or inherently every element of claim 1. Id. at 9. In particular, Appellant argues that the finding that Murakami’s graphite inherently has Appeal 2020-002583 Application 15/206,262 5 the claimed properties is improper because the Examiner cited the ’262 Application’s Specification as evidence of the inherency. Id. at 10. This argument is not persuasive. While we agree with Appellant that Murakami does not expressly describe its graphite as having the claimed surface roughness and surface-unevenness variation, there is nothing improper the finding that Murakami’s graphite inherently has the recited properties. Appellant’s argument amounts to an attack on the logic underlying the holding in Best. Such attacks are destined to fail at the Board because we lack the power to overturn Best. Nor would we want to. The burden shift authorized in Best represents sound public policy and a sensible allocation of burdens. As the Court explained in Best, the “fairness [of this policy] is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” Best, 562 F.2d at 1255 (citing In re Brown, 459 F.2d 531, 535 (CCPA 1972) (“As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.”). For the reasons set forth above, we affirm the rejection of claims 1, 3, and 4 as anticipated by Murakami. B. Rejection of claims 1, 3, and 4 as unpatentable over Murakami as evidenced by Nishikawa As discussed above, we have determined that the Examiner correctly rejected claims 1, 3, 4 as anticipated by Murakami. For the following reasons, we also affirm the rejection of these claims as obvious over Murakami as evidenced by Nishikawa. Appeal 2020-002583 Application 15/206,262 6 Even if a person having ordinary skill in the art at the time of the invention would not have understood to have literally described the combination of the optional low-temperature thermal decomposition treatment and the ones-step pressing process, Murakami would have suggested such a process. Murakami teaches that the polyimide films used in its process decompose at temperatures between 400°C and 700°C. Murakami, 7:32–33. According to Murakami, contamination of the hot press apparatus with the decomposition products of the polymer films may be avoided by using the low-temperature thermal decomposition treatment prior to hot pressing. Id., 7:32–40. Thus, it would have been obvious to a person having ordinary skill in the art to use the optional life in temperature thermal decomposition step prior to hot pressing to avoid contamination of the hot pressing apparatus. In view of the foregoing, we affirm the rejection of claims 1, 3, and 4 as obvious over Murakami as evidenced by Nishikawa. IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4 102(a)(1) Murakami, Nishikawa 1, 3, 4 1, 3, 4 103 Murakami, Nishikawa 1, 3, 4 Overall Outcome 1, 3, 4 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 Copy with citationCopy as parenthetical citation