Ex Parte Starkovich et al

Patent Trial and Appeal Board

Sep 26, 2018

14809962 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/809,962 07/27/2015
32205 7590 09/28/2018
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
FIRST NAMED INVENTOR
John A. Starkovich
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.
NGC-432/007071-0030 3284
EXAMINER
LAW, NGA LEUNG V
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
info@pattimalvonelg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. STARKOVICH, HSIAO H. PENG, JESSE B. TICE, and
EDWARD M. SILVERMAN
Appeal 2018-008528
Application 14/809 ,962
Technology Center 1700
Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
July 2 7, 2015 ("Spec."); Final Office Action dated March 21, 2018 ("Final");
Appeal Brief filed July 2, 2018 ("Appeal Br."); Examiner's Answer dated August
7, 2018 ("Ans."); and Reply Brief filed August 28, 2018 ("Reply Br.").
Appeal 2018-008528
Application 14/809 ,962
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-5, 9-13, and 20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
The invention relates to "a method for preparing robust flexible appliques or
films from delicate carbon nanotubes together with a post-assembly treatment
method for maintaining or restoring their excellent absorber properties, enabling
their practical use in terrestrial and space applications." Spec. ,r 12. Of the
appealed claims, claims 1 and 20 are independent. See generally Appeal Br. 21-25
(Claims Appendix). Claim 1 is reproduced below.
1. A method for making a vertically aligned carbon
nanotube (V ACNT) nanocomposite applique, comprising:
growing a V ACNT array on a substrate that comprises one or
more of silicon, quartz, and polyurethane polymer;
treating the V ACNT array with a polymer solution;
performing one or more of curing and drying the polymer;
and, etching a surface of the polymer-V ACNT nanocomposite
using plasma to remove some of the polymer and to expose a portion
of the V ACNT, thereby making the V ACNT nanocomposite applique
having a reflectance of less than approximately 2% between a
wavelength of approximately 300 nanometers (nm) and a wavelength
of approximately 2,400 nm, wherein the method does not comprise
using a photoacid generator for one or more of embedding the
VACNT and infiltrating the VACNT.
Id. at 21 (Claims Appendix). Claim 20, the only other independent claim on
appeal, differs substantively from claim 1 in that claim 20 additionally requires
growing the V ACNT array "to a height between approximately 50 microns and
2 Appellant is the Applicant and real party in interest: Northrop Grumman Systems
Corporation. See Appeal Br. 3.
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Application 14/809 ,962
approximately 200 microns with a density between approximately 3 % and
approximately 20%." Id. at 25 (Claims Appendix).
The Examiner relies on the following references as evidence of
unpatentability:
Jiang et al.
Sansom et al.
Damon et al.
US 2006/0263274 Al
US 2012/0021164 Al
US 2012/0301980 Al
Nov. 23, 2006
Jan.26,2012
Nov. 29, 2012
Nguyen Tuan Hong et al., Flexible carbon nanotube-array cathodes: Fabrication
and bending effectonfield-electron emission 28(2) J. VAC. SCI. TECHNOL. (Mar. 20,
2010) ("Nguyen").
The claims stand finally rejected as follows (see Final 3-10):
1. claims 1-5, 9-13, and 20 under 35 U.S.C. § 112(a)3 as failing to
comply with the written description requirement;
2. claims 1--4 and 9 under 35 U.S.C. § 103 as unpatentable over Nguyen
in view of Damon;
3. claim 5 under 35 U.S.C. § 103 as unpatentable over Nguyen and
Damon in view of Jiang;
4. claims 10 and 11-13 under 35 U.S.C. § 103 as unpatentable over
Nguyen and Damon in view of Sansom; and
5. claim 20 under 35 U.S.C. § 103 as unpatentable over Nguyen in view
of Jiang and Damon.
3 The Examiner cites 35 U.S.C. § 112 (pre-AIA), first paragraph, in the alternative.
Because the application was filed after the effective date of the America Invents
Act, and Appellant does not appear to claim the benefit of an earlier, pre-AIA
filing date, we refer only to the post-AIA statutory provision.
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Application 14/809 ,962
Rejection under 35 USC§ l 12(a)
Independent claims 1 and 20 recite "wherein the method does not
comprise using a photoacid generator for one or more of embedding the V ACNT
and infiltrating the VACNT." The Examiner finds the originally-filed application
does not contain written description support for this negative limitation. Final Act.
2.
The test for determining whether claims satisfy the written description
requirement involves "an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art. Based on
that inquiry, the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention claimed."
Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)).
"Negative claim limitations are adequately supported when the specification
describes a reason to exclude the relevant limitation." Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). In Santarus, the court found
that claims reciting the negative limitation "wherein the composition contains no
sucralfate" satisfied the written description requirement, because the specification
described sucralfate as having adverse effects and described omeprazole as an
advantageous alternative. Id. at 1350-51. Ininphi, the court found substantial
evidence supported the Board's finding that claims reciting the negative limitation
"DDR chip selects that are not CAS, RAS, or bank address signals" satisfied the
written description requirement because the specification incorporated by reference
a JEDEC standard specifying that DDR signals (including CS, RAS, CAS, and
bank address signals) are distinct from each other. 805 F.3d at 1353, 1357. The
court held that "properly describing alternative features-without articulating
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Application 14/809 ,962
advantages or disadvantages of each feature----can constitute a 'reason to exclude'
under the standard articulated in Santarus." Id. at 1355.
Appellant concedes that the originally-filed application does not use the
language of the negative claim limitation, but argues "the whole of the
specification supports the current claims." Appeal Br. 10-11. Appellant quotes
several passages from the Specification in support of this argument. Id. at 8-12.
We have reviewed these passages, as well as the Specification in its entirety. We
do not find, however, nor does Appellant identify with any degree of specificity, a
disclosure in the Specification that a photoacid generator is an optional component
in the inventive method, is one alternative in a list of possible components for
embedding and/or infiltrating the VACNT, or has some disadvantage when used in
a method for making a V ACNT nanocomposite applique.
In sum, Appellant has not persuaded us of reversible error in the Examiner's
determination that the originally-filed application does not provide written
description support for excluding the use of a photoacid generator as recited in
claims 1 and 20. Accordingly, we sustain the rejection of claims 1-5, 9-13, and 20
under 35 U.S.C. § 112(a).
Rejections under 35 US. C. § 103
Appellant's arguments in support of patentability as to all appealed claims
are based on limitations found in claims 1 and 20. See generally Appeal Br. 13-
20. With respect to claim 1, the Examiner finds Nguyen discloses the method as
claimed, with the exceptions that Nguyen does not explicitly teach the use of
plasma for the etching step, and that the resulting VACNT nanocomposite applique
has "a reflectance of less than approximately 2 % between a wavelength of
approximately 300 nanometers (nm) and a wavelength of approximately 2,400 nm"
(claim 1). Final 4--5. The Examiner finds one of ordinary skill in the art would
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Application 14/809 ,962
have used plasma for Nguyen's step of etching the surface of the
polydimethylsiloxane-covered V ACNT to expose the tips of the carbon nanotubes
based on Damon's disclosure that plasma can be used to provide selective etching
of a polymer matrix to expose the VACNT. Id. at 5. The Examiner finds the
resulting V ACNT nanocomposite applique necessarily would have possessed the
claimed reflectance because the claimed and prior art methods are the same. Id. at
4.
The Examiner relies on the same findings in rejecting claim 20. See Final 8-
10. With respect to the claim 20 limitation "to a height between approximately 50
microns and approximately 200 microns with a density between approximately 3%
and approximately 20%," the Examiner finds "Nguyen teaches the height of the
V ACNT is 200 to 900micrometer, [sic] which overlaps with the claimed range."
Id. at 8. The Examiner further finds Jiang discloses that in a method of making an
array of carbon nanotubes on a substrate, the density of the nanotube array "can be
controlled by adjusting the flow rates of the carbon source gas and the carrier gas,
and by altering the predetermined temperature and the reaction time" (Jiang ,r 29).
Final 9. Based on Jiang's disclosure, the Examiner finds the density of the
nanotube array is a result effective variable, and, therefore, further finds that it
would have been within the skill of the ordinary artisan to adjust the flow rate of
carbon gas, the temperature, or the reaction time in the method of Nguyen to yield
the desired density of the carbon nanotube array. Id.
Appellant's arguments in support of patentability of the appealed claims
have been fully addressed by the Examiner in the Answer, and are not persuasive
for the reasons stated therein. See Ans. 12-15. In general, as noted by the
Examiner, many of Appellant's arguments are directed to the individual teachings
of the references and do not address the understanding of the ordinary artisan at the
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time of the invention with respect to the combined teachings of the references. See
Ans. 13. We add the following.
Appellant argues the Examiner "provides zero evidence to support" a
finding that the proposed combination of references necessarily would produce a
V ACNT nanocomposite applique having a reflectance as recited in the claims.
Appeal Br. 14. Appellant's argument is not persuasive because the Specification
supports the Examiner's finding that because the claimed method and the
method( s) resulting from the combined teachings of the references (hereinafter,
"the prior art method(s)") are the same, the prior art method necessarily would
have resulted in a V ACNT nanocomposite applique having a reflectance as
claimed. See Spec. ,r 33 ("Embodiments of the invention provide a wide size
distribution of pores and wells, resulting in the broadband absorption
characteristics, with low (less than approximately 1-2%) reflectance from visible
wavelengths into infrared wavelengths, from approximately 300 nm to 2,400 nm,
as seen in Figure 3."); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) ("Even if
no prior art of record explicitly discusses the ... [limitation], [Appellant's]
application itself instructs that [ the limitation] is not an additional requirement
imposed by the claims on the [ claimed invention], but rather a property necessarily
present in [the claimed invention].") cf Titanium Metals Corp. of America v.
Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) ("[R]ecitation, in a claim to a
composition, of a particular property said to be possessed by the recited
composition, be that property newly-discovered or not, does not necessarily change
the scope of the subject matter otherwise defined by that claim." (quoting In re
Wilder, 429 F.2d 447 450 (CCPA 1962))).
Appellant argues Figure 3 and the corresponding description in the
Specification are evidence of "the highly unexpected, inventive results provided by
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Application 14/809 ,962
embodiments of the invention" having the reflectance recited in claims 1 and 20.
Appeal Br. 14. As explained by the Examiner, this evidence is not persuasive
because it does not provide a comparison with the closest prior art, i.e., Nguyen.
See Ans. 12; In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
("[W]hen unexpected results are used as evidence of nonobviousness, the results
must be shown to be unexpected compared with the closest prior art."). While
there are comparisons to prior art structure, it is not established to be that of
Nguyen. Further, there is no persuasive evidence of record that the results are, in
fact, unexpected. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument ... cannot take the place of evidence."). Moreover,
Appellant has not identified error in the Examiner's findings that the prior art
methods comprise the same steps recited in claims 1 and 20 and, therefore,
reasonably would be expected to produce a V ACNT nanocomposite applique
having the same properties as a V ACNT nanocomposite produced by the claimed
methods.
Appellant also argues the references fail to disclose or a suggest the negative
limitation "wherein the method does not comprise using a photoacid generator for
one or more of embedding the V ACNT and infiltrating the V ACNT" ( claims 1 and
20). See, e.g., Appeal Br. 19. Appellant's argument is not persuasive because
Appellant has not shown error in the Examiner's finding that Nguyen's method
does not utilize a photoacid generator. See Final 4; Ans. 14. We also are not
persuaded by Appellant's argument that Damon teaches away from a method that
does not utilize a photoacid generator. See Appeal Br. 18. Although Damon's
method uses a photoacid generator, the Examiner relies on Damon solely for a
teaching that plasma can be used for selective etching. See Final 5, 9--10.
Appellant has not explained why the ordinary artisan would have been dissuaded
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from applying this teaching in the method of Nguyen, or otherwise identified error
in the Examiner's finding that the prior art methods would not require the addition
of a photoacid generator. See Appeal Br. 17-19; Reply Br. 14--15; Ans. 9; In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) ("[A]
reference teaches away from a combination when using it in that combination
would produce an inoperative result."); In re Gurley 27 F.3d 551, 553 (Fed. Cir.
1994) ("A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that was
taken by the applicant.").
Appellant argues "Damon is a CNT array electrical conductor and has
nothing whatsoever to do with CNT sheet absorbers." Appeal Br. 18; see also
Reply Br. 14. To the extent Appellant is arguing that Damon does not qualify as
analogous art, we are not persuaded. If a reference is in a different field from that
of the inventor's endeavor, it is still considered analogous art if it deals with a
matter that logically would have commended itself to an inventor's attention in
considering his problem. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Appellant has not explained persuasively why the Examiner erred in finding that
one of ordinary skill in the art would have considered the teachings of Damon in
considering suitable techniques for etching polymer to expose VACNT. See Final
5.
We decline to consider the arguments advanced by Appellant for the first
time in the Reply Brief (e.g., that the Examiner erred in finding Nguyen discloses a
V ACNT array (Reply Br. 9) ), because these arguments do not appear to address a
new argument made by the Examiner in the Answer, and Appellant has not
explained why these arguments were not made in the Appeal Brief. See Cross
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Med. Prods. Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n.3
(Fed. Cir. 2005) (explaining that arguments not raised in the opening Brief are
deemed waived); Ex parte Borden, 93 USPQ2d 1473, 1474 (Bd. Pat. App. & Int.
2010) (informative) ("The reply brief is not an opportunity to make arguments that
could have been made during prosecution, but were not. Nor is the reply brief an
opportunity to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not.").
In sum, Appellant has failed to identify reversible error in the Examiner's
rejections under 35 U.S.C. § 112(a) and 35 U.S.C. § 103. Accordingly, we sustain
all grounds of rejection.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
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