Panasonic Intellectual Property Management Co., Ltd.

Patent Trials and Appeals Board

Mar 30, 2021

2020002583 (P.T.A.B. Mar. 30, 2021)

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.
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Application 15/206,262
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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
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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.
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Application 15/206,262
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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