Clive P. Bosnyak et al.Download PDFPatent Trials and Appeals BoardApr 13, 202015399149 - (D) (P.T.A.B. Apr. 13, 2020) 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. 15/399,149 01/05/2017 Clive P. Bosnyak MRE001NPD / 264593 1307 130577 7590 04/13/2020 Hunton Andrews Kurth LLP/HAK TX 600 Travis Street Suite 4200 Houston, TX 77002 EXAMINER WORRELL, KEVIN ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 04/13/2020 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): patenttrademarks@andrewskurth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CLIVE P. BOSNYAK and KURT W. SWOGGER ____________________ Appeal 2019-002673 Application 15/399,149 Technology Center 1700 ____________________ Before N. WHITNEY WILSON, BRIAN D. RANGE, and LILAN REN, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s June 1, 2018 decision finally rejecting claims 1–21 (“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on March 9, 2020. A transcript of that hearing will be part of the record. We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Molecular Rebar Design, LLC as the real party in interest (Appeal Br. 1). Appeal 2019-002673 Application 15/399,149 2 CLAIMED SUBJECT MATTER Appellant’s disclosure relates to epoxy/nanotube composites. The composites have at least one epoxy resin, and contain a “plurality” of discrete oxidized carbon nanotubes (Abstract). The nanotubes have an aspect ratio of from about 25 to about 250 (id.). Details of the claimed invention are set forth in claim 1, which is reproduced below from the Claims Appendix to the Appeal Brief: 1. An epoxy/nanotube composite comprising a plurality of discrete oxidized carbon nanotubes having an aspect ratio of from about 25 to about 250, and at least one epoxy resin. REJECTIONS 1. Claims 1, 2, 4–17, 19, and 20 are rejected under 35 U.S.C. § 102(b) as anticipated by Khabashesku.2 2. Claims 3, 18, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Khabashesku in view of Griffo.3 DISCUSSION Rejection 1. “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). In this instance, with regards to independent claim 1, Appellant argues that Khabashesku does not disclose a composition which contains a “plurality of 2 Khabashesku et al., US 2006/0166003 A1, published July 27, 2006. 3 Griffo et al., US 2009/0038858 A1, published February 12, 2009. Appeal 2019-002673 Application 15/399,149 3 discrete oxidized carbon nanotubes having an aspect ratio of from about 25 to about 250.” In particular, Appellant argues that because Khabashesku “fails to disclose and teaches away from a greater number of discrete nanotubes than bundled or roped non-discrete nanotubes, it fails to teach a ‘plurality’ of discrete nanotubes as required by the claims” (Appeal Br. 6). Thus, the dispositive issue for the anticipation rejection is whether the term “plurality,” as used in claim 1, is, when properly construed, broad enough for the claim to read on the composition Khabashesku discloses. It is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). To the extent possible, claim terms are given their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Idiosyncratic language, highly technical terms, or terms coined by the inventor are best understood by reference to the specification. Id. at 1315–16. Appellant argues that the ordinary meaning of “plurality” is “more than any other,” and, therefore, that “a ‘plurality’ of discrete nanotubes simply means that there are more discrete nanotubes than non-discrete nanotubes in the claimed composition” (Appeal Br. 7). Appellant does not provide, in the Appeal Brief, any explanation for this construction (see, Appeal Br. 7). Appeal 2019-002673 Application 15/399,149 4 However, based on our review of the record and the arguments set forth at the oral hearing on March 9, 2020, we determine that the Examiner’s position that the broadest reasonable interpretation of “plurality” as used in the claims – i.e. “more than one” (Ans. 7) – is correct. The Examiner’s position is supported, inter alia, by the dictionary definition proffered by Appellant which defines “plurality” as follows: 1a: the state of being plural b: the state of being numerous c: a large number or quantity 2: PLURALISM sense 1 also: a benefice held by pluralism 3a: a number greater than another b: an excess of votes over those cast for an opposing candidate c: a number of votes cast for a candidate in a contest of more than two candidates that is greater than the number cast for any other candidate but not more than half the total votes cast (Meriam-Webster On-Line Dictionary (https://www.merriam- webster.com/dictionary/plurality, last viewed on April 6, 2020). Reply Br. 1–2.) As can be seen from the foregoing, the first definition in the dictionary cited by Appellant – “the state of being plural” – is the broadest definition, and is consistent with the Examiner’s construction of the term. This construction is also consistent with the Specification, which does not provide a specific definition of “plurality” as used in claim 1. ICON, 496 F.3d at 1379. While there are at least two instances where the Specification states that “a plurality of carbon nanotubes is disclosed”, neither provides a definition of “plurality,” or any other information or Appeal 2019-002673 Application 15/399,149 5 explanation of the meaning of the term (Spec. ¶¶ 7, 64). Appellant argues that the use of the term “plurality” in ¶ 7 of the Specification is “consistent with ‘a plurality of’ discrete nanotubes meaning ‘a greater number of discrete nanotubes than bundled nanotubes’” (Reply Br. 5). However, the language cited by Appellant, which distinguishes between discrete nanotubes and bundled nanotubes, does not provide any explanation of “plurality,” and does not suggest that the broadest reasonable definition of “plurality” is broader than how the term should be construed in the claims. The Specification also uses the term “plurality” in one other section: In some embodiments, the carbon nanotubes may be further associated or functionalized with an electroactive material. In some embodiments, an electroactive material may be oxides of transition metals such as, for example, Ru, Ir, W, Mo, Mn, Ni and Co. In some embodiments, the electroactive material may be a conducting polymer such as, for example, polyaniline, polyvinylpyrrole or polyacetylene. In some embodiments, the electroactive material may be a nanoparticle or plurality of nanoparticles bound to the carbon nanotubes. For example, in some embodiments, an electroactive nanoparticle may include materials such as SnO2, Li4Ti5O12, silicon nanotubes, silicon nanoparticles and various combinations thereof. Carbon nanotubes associated or functionalized with an electroactive material may be particularly advantageous for applications involving electrical conductivity. (Spec. ¶ 92, emphasis added). The foregoing use of the term “plurality” is clearly an instance in which it is being used to mean “more than one” (i.e. the state of being plural), which is the broadest dictionary interpretation of the word. Appeal 2019-002673 Application 15/399,149 6 Thus, the Specification does not support a construction of “plurality” that is narrower than the broadest dictionary definition provided by Appellant. While Appellant provides extensive arguments as to why Khabashesku does not teach or disclose a composition which contains more discrete nanotubes than non-discrete nanotubes (Appeal Br. 7–11), these arguments are not pertinent given the proper claim construction outlined above. Accordingly, Appellant has not demonstrated reversible error in Rejection 1. Rejection 2, as applied to claims 18 and 21.4 Appellant makes separate arguments urging reversal of the §103 rejection of claims 18 and 21. These claims each recite that the plurality of discrete oxidize carbon nanotubes comprise multi-wall nanotubes with specific aspect ratios and sizes. The Examiner finds that Griffo teaches nanomaterial additives including oxidized multiwall carbon nanotubes with the claimed aspect ratios (Final Act. 6). The Examiner finds that it would have been obvious to modify Khabashesku’s nanotubes to provide carbon nanotubes which confer superior properties, such as enhanced moduli, hardness, and tear strength (id., citing Griffo ¶¶ 45, 47, 68, 69, and 76). 4 In addition to the argument discussed below, Appellant seeks reversal of the rejection of each of claims 3, 18, and 21 for the same reasons as claim 1 (Appeal Br. 11–12). These reasons are not persuasive as discussed earlier in this decision. Appeal 2019-002673 Application 15/399,149 7 Appellant does not dispute that Griffo discloses multi-walled carbon nanotubes having the claimed aspect ratios (but does dispute that it discloses discrete multi-walled carbon nanotubes). Appellant argues that Khabashesku does not teach the use of multi-walled carbon nanotubes, and even specifically teaches that single-walled nanotubes can be used to prepare epoxy composites, excluding the use of the multi-walled carbon nanotubes for that purpose (Appeal Br. 12). According to Appellant, a person of skill in the art would not have been motivated to use multi-walled carbon nanotubes in Khabashesku’s composites because Khabashesku teaches away from using multi-walled tubes. Id. This argument is not persuasive. As found by the Examiner, Khabashesku specifically teaches the use of multi-walled nanotubes (Ans. 10, citing Khabashesku ¶ 46). Thus, an argument that Khabashesku teaches away from the use of multi-walled nanotubes is not supported by the record and not persuasive of reversible error. Accordingly, we also sustain Rejection 2. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References(s)/Basis Affirmed Reversed 1, 2, 4–17, 19, 20 102(b) Khabashesku 1, 2, 4–17, 19, 20 3, 18, 21 103(a) Khabashesku, Griffo 3, 18, 21 Appeal 2019-002673 Application 15/399,149 8 Claims Rejected 35 U.S.C. § References(s)/Basis Affirmed Reversed Overall Outcome 1–21 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation