Ex Parte Dennes et al

Patent Trial and Appeal Board

Jan 27, 2017

12899770 (P.T.A.B. Jan. 27, 2017)

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.
12/899,770 10/07/2010 T. Joseph Dennes CL4859USNA 6480
23906 7590 01/31/2017
E I DU PONT DE NEMOURS AND COMPANY
LEGAL PATENT RECORDS CENTER
CHESTNUT RUN PLAZA 721/2340
974 CENTRE ROAD, P.O. BOX 2915
WILMINGTON, DE 19805
EXAMINER
TENTONI, LEO B
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T. JOSEPH DENNES, LAKSHMI KRISHNAMURTHY,
GLEN E. SIMMONDS, and SIMON FRISK1
Appeal 2015-005212
Application 12/899,770
Technology Center 1700
Before GEORGE C. BEST, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL2
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s maintained rejection of claims 1 and 3-17.3 We have
jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
1 Appellants state that the real party in interest is E.I. du Pont de Nemours &
Co. Appeal Br. 1.
2 We refer to the Final Office Action mailed August 13, 2014, the Advisory
Action mailed November 4, 2014, the Appeal Brief filed December 3, 2014,
and the Examiner’s Answer mailed February 13, 2014.
3 Appellants canceled claim 2 in an amendment-after-final (Advisory Act.
2), the rejection of which (Final Act. 5), accordingly, has been withdrawn
(Ans. 12).
Appeal 2015-005212
Application 12/899,770
BACKGROUND
Appellants’ claimed invention relates to a process for obtaining
polyimide fibers comprising heating a polyamic acid fiber to a temperature
in range of a first temperature—the imidization temperature of the polyamic
acid—and a second temperature—the polyimide’s decomposition
temperature. Spec. Abstract. Independent claims 1 and 14 are both directed
to the process.
Claim 1 is representative of the claims on appeal.
1. A process comprising:
heating a polyamic acid fiber to a temperature in the
range of a first temperature and a second temperature for a
period of time in the range of 5 seconds to 30 seconds to form a
polyimide fiber,
wherein the polyamic acid fiber comprises a polyamic
acid that consists of a polyamic acid that is obtained by reacting
a tetracarboxylic acid dianhydride with an organic diamine and
the polyamic acid is thermally converted to polyimide,
wherein the first temperature is the imidization
temperature of the polyamic acid and the second temperature is
the decomposition temperature of the polyimide and wherein
the degree of imidization of the polyimide is 0.51 or greater as
measured by the ratio of the imide C-N absorbance at 1375 cm'1
to the p-substituted C-H absorbance at 1500 cm'1 in the infrared
spectrum of the polyimide fiber.
Appeal Br. (Claims Appendix) 7.
Independent claim 14 is likewise directed to a process for preparing a
polyimide fiber, but recites “essentially complete imidization” rather than
specifying “the degree of imidization ... is 0.51 or greater” and recites that
“the heating takes place in an atmosphere of air.” Claims 1, 14.
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Appeal 2015-005212
Application 12/899,770
REJECTIONS
The claims stand rejected under 35 U.S.C. § 103:
I. Claims 1,3, and 5-7 over Seltzer4 in view of
Nakamori5 and Kato;6
II. Claim 4 over Seltzer in view of Nakamori, Kato,
and Yu;7
III. Claims 8, 9, and 11-13 over Seltzer in view of
Nakamori, Kato, and Zhang;8
IV. Claim 10 over Seltzer in view of Nakamori, Kato,
Zhang, and Oikawa;9
V. Claim 16 over Seltzer in view of Nakamori, Kato,
and Tamai;10
VI. Claim 14 over Seltzer in view of Nakamori and
Kato;
VII. Claim 15 over Seltzer in view of Nakamori, Kato,
Yu, and Tamai; and
VIII. Claim 17 over Seltzer in view of Nakamori, Kato,
Dorogy,11 and Tamai.
4 Seltzer et al., US 3,814,719, issued June 4, 1974.
5 Nakamori et al., WO 2007/148674 Al, published December 27, 2007 (US
2010/0178830 Al, published July 15, 2010, an English language document
is used as an equivalent by the Examiner, which use is not contested).
6 Kato et al., JP 03014617 A, published January 23, 1991.
7 Yu et al., US 5,518,779, issued May 21, 1996.
8 Zhang et al., Preparation of Polyimide Nanofibers by Electrospinning,
2006 Int’l Conference on MEMS, NANO, and Smart Systems, 58-60.
9 Oikawa et al., US 5,708,128, issued January 13, 1998.
10 Tamai et al., US 5,374,708, issued December 20, 1994.
11 Dorogy Jr. et al., US 5,367,046, issued November 22, 1994.
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Appeal 2015-005212
Application 12/899,770
DISCUSSION
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365—66 (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
appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
Appellants argue all claims on the basis of independent claim 1 and
the rejection grounded on Seltzer in view of Nakamori and Kato. Appeal Br.
3-6. On this record, we are not persuaded that the Examiner erred reversibly
in maintaining the obviousness rejections of the claims over the collective
teachings of the cited prior art for the reasons well expressed by the
Examiner in the Final Office Action and the Answer. We add the following
for emphasis and completeness.
Seltzer relates to methods of forming polyimide fiber by heating a
polyamic acid fiber. The Examiner relies on Seltzer for its disclosure of
(i) polyamic acid fiber wherein the included polyamic acid is obtained by
reacting a dianhydride with an organic diamine and (ii) making polyimide
including the step of heating a polyamic acid fiber for a period of time to
form a polyimide fiber. Ans. 3 (citing Seltzer col. 6,11. 47-59; col. 7,11. 30-
32, 46-50). The Examiner finds Seltzer teaches heating the polyamic fiber
“to a temperature in the range of a first temperature (e.g., above 50[°] C) and
a second temperature (e.g., 300 °C to 500 °C) for a period of time of from a
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Application 12/899,770
few seconds to several hours to form a polyimide fiber.” Ans. 3. As to the
time of heating, the Examiner finds that Seltzer is directed to the essentially
complete conversion of polyamic acid to polyimide and reasonably infers
that Seltzer teaches this can be obtained by heating for a few seconds, as
well as by heating for longer periods of time. Ans. 13 (citing Seltzer col. 6,
11. 47-52).
Nakamura also relates to methods of forming polyimide fiber. The
Examiner relies on Nakamura for its disclosure of tetracarboxylic acid
dianhydride (e.g., pyromellitic dianhydride or PMDA) as a dianhydride for
use in forming a polyimide. Ans. 3^1 (citing Nakamura 20, 79).
Kato also relates to methods of forming polyimide fiber, including the
step of heating. The Examiner relies on Kato for its disclosure of a first
temperature—the imidization temperature—and second temperature—the
decomposition temperature of the polyimide. Ans. 4.
The Examiner concludes that one of ordinary skill in the art would
have found it obvious at the time of the invention to have used a
tetracarboxylic acid dianhydride in the process of Seltzer, and that it would
have been merely the substitution of one known material for another that
would have been expected to yield predictable results at the time of the
invention. Ans. 4. As to heating within the temperature range defined by
the first and second temperatures, the Examiner reasonably concludes it
would have been obvious to heat at a temperature that is high enough to
imidize the polyamic fiber but below the temperature at which polyimide
decomposes in order to imidize the polyamic fiber without decomposing the
resulting polyimide. Ans. 4-5.
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Application 12/899,770
The Examiner determines that the range of times of heating disclosed
in Seltzer—a few seconds to several hours—is an overlapping range of that
claimed—5 seconds to 30 seconds—and concludes the claimed range prima
facie obvious. Ans. 12-13.
Appellants contend the Examiner has erred because there is no
explicit teaching that the polyamic acid is completely imidized under the
conditions of the process disclosed in Seltzer, particularly within the short
time period set forth in claim 1. Appeal Br. 4-6. Appellants highlight that
“[references relied upon to support a rejection under 35 USC 103 must. . .
provide an enabling disclosure.” Appeal Br. 4. Appellants emphasize the
high degree of imidization set forth in the claim, e.g., a DOI of 0.51, and that
it represents complete imidization. Appeal Br. 5. Appellants further
emphasize that the specific examples using longer curing periods in Seltzer
are contrary to the rapid, complete conversion claimed and rely on this in
arguing that the skilled artisan would not be led to the shorter times claimed
and as evidence that “complete imidization [in Seltzer] occurs in a timescale
of the order of 1.5 hours or more.” Appeal Br. 5-6. Appellants rely on the
contention that a longer timescale for “complete imidization” is set forth in
Seltzer and that this rebuts the prima facie case of obviousness grounded on
the overlap in imidization time. Appeal Br. 5-6.
On this record, we find Appellants’ arguments unpersuasive of
reversible error and lacking sufficient evidentiary support to rebut the prima
facie case of obviousness grounded on heating within a disclosed range of
temperatures for a time within a disclosed range of times. As set forth by
the Examiner, Seltzer reasonably teaches heating at temperatures sufficient
to achieve high levels of imidization within periods of time as short as a few
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seconds. Ans. 3, 13. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”). The Examiner has, accordingly, established
a prima facie case of obviousness.
Appellants’ arguments that the cited references are not enabled to
provide the required level of imidization in less than 30 seconds lack
sufficient support to rebut the presumption that they are enabled. In re
Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013) (“[A]n applicant must generally
do more than state an unsupported belief that a reference is not enabling.”);
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir.
2003) (“[A] presumption arises that both the claimed and unclaimed
disclosures in a prior art reference are enabled.”).
Appellants’ particular arguments grounded on some particularly high
degree of imidization and that Seltzer would suggest to the skilled artisan
that this is only met by heating for longer time periods lack sufficient
support where there is no evidence that a DOI of 0.51 is the highest level
that can be obtained, but is rather only what is considered to be “fully
imidized.” Spec. 13,11. 13-14 (“For the purposes of the present invention, a
fully imidized nanoweb . . . [has a DOI] greater than 0.51.”); see also Spec.
10,1. 29-11,1. 6 (describing variously preferred DOI values including a
most preferred DOI of at least 0.57); 13,11. 7-10 (describing imidization for
longer times leading to higher DOI values). It follows, accordingly, that
Seltzer’s use of longer time periods is not indicative that the shorter time
periods would not provide the degree of imidization claimed. Further, on
this record, Appellants proffer no persuasive evidence that obtaining the
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level of imidization claimed within the period of time recited in the claim
would have been unexpected by the skilled artisan at the time of the
invention. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument. . . cannot take the place of evidence.”).
We are, accordingly, not persuaded of reversible error and, therefore,
affirm this ground of rejection.
CONCLUSION
The Examiner’s rejections of claims 1 and 3-14 under 35 U.S.C.
§ 103 are 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).
AFFIRMED
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