Clive P. Bosnyak et al.

Patent Trials and Appeals Board

Apr 13, 2020

15399149 - (D) (P.T.A.B. Apr. 13, 2020)

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).
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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.
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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).
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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
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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.
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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.
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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
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Application 15/399,149

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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