Ex Parte Cakmak et alDownload PDFPatent Trial and Appeal BoardSep 17, 201813383988 (P.T.A.B. Sep. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/383,988 02/28/2012 Mukerrem Cakmak 26360 7590 09/17/2018 Renner Kenner Greive Bobak Taylor & Weber Co., LPA First National Tower, Suite 400 106 South Main Street Akron, OH 44308-1412 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. UOA.783.US 2302 EXAMINER YOUNG, WILLIAM D ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 09/17/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MUKERREM CAKMAK, WEI ZHAO, and BARIS Y ALCIN Appeal2017-008954 Application 13/383,988 Technology Center 1700 Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 82, 83, 88, 96, 101, 108-110, 114, and 120-129 of Application 13/383,988 under 35 U.S.C. § 103(a) (pre- AIA). Final Office Action (mailed July 27, 2016, hereinafter "Final Act.") 2-10. Appellants seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). 1 We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM-IN-PART. 1 Appellants identify, "The University of Akron" as the real party in interest. Appeal Br. 1. Appeal2017-008954 Application 13/383,988 BACKGROUND The present application generally relates to a method for producing flexible, transparent, electrically conducting hybrid polymer films comprising electrically conductive electrospun nanofibers embedded in dielectric polymer films. Spec. 1. Transparent conductive films of this type may be used as electrodes for various electronic devices such as liquid crystal displays (LCDs ), plasma displays (PDs ), touch panels, organic light- emitting diodes (OLEDs) and photovoltaics. Id. at 1. Claim 82 of the Application is reproduced below with certain language bolded for emphasis: 82. A method for producing a flexible, transparent, and electrically conductive polymer film comprising the steps of: (i) casting at least one flexible, transparent, dielectric polymer film onto a suitable surface, the flexible, transparent, dielectric polymer film providing a liquid layer; (ii) preparing at least one electrospinnable polymer composition from a combination of at least one electrically conductive material and at least one electrospinnable polymer; and (iii) directly electrospinning the at least one electrospinnable polymer composition onto the flexible, transparent, dielectric polymer film of Step (i), whereby the at least one electrospinnable polymer composition penetrates partially or completely into the liquid layer to produce one or more electrically conductive nanofibers fully or partially embedded in the cast film of Step (i), wherein the one or more electrically conductive nanofibers render the film electrically conducting and define open spaces to retain transparency in the flexible, transparent, and electrically conductive polymer film, wherein the flexible, transparent, and electrically conductive polymer film is suitable for use in a flexible display app li cation. Appeal Br. 10 (Claims App.) (emphasis added). 2 Appeal2017-008954 Application 13/383,988 REJECTIONS The Examiner maintains the following rejections2 : 1. Claims 82, 83, 88, 96, 101, 108-110, 114, 123-125, and 127 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Cakmak, 3 in view of Senecal, 4 and Higgins. 5 Final Act. 4--7. 2. Claim 120 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Cakmak in view of Senecal and Higgins and further in view ofHamedi. 6 Id. at 7-8. 3. Claim 121 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Cakmak in view of Senecal and Higgins and further in view of Neves. 7 Id. at 8-9. 2 The Final Action includes a rejection of various claims for failure to comply with the written description requirement. Final Act. 2--4. This basis of rejection was subsequently withdrawn. Answer 9. 3 Cakmak et al., WO 2007/047662 Al; published Apr. 26, 2007 (hereinafter "Cakmak"). 4 Senecal et al., US 2001/0045547 Al; published Nov. 29, 2001 (hereinafter "Senecal"). 5 Higgins et al., US 2007 /0286982 Al; published Dec. 13, 2007 (hereinafter "Higgins"). 6 Hamedi et al., WO 2008/066458 Al; published June 5, 2008; published June 5, 2008 (with citations to US 2010/0163283 Al) (hereinafter "Hamedi "). 7 Nuno M. Neves et al., Patterning of polymer nanofiber meshes by electrospinningfor biomedical applications, International Journal of Nanomedicine, 2(3), 433--448 (2007) (hereinafter "Neves"). 3 Appeal2017-008954 Application 13/383,988 4. Claim 122 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Cakmak in view of Senecal and Higgins and further in view of Griffin. 8 Id. at 9. 5. Claims 126, 128, and 129 are rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious over Cakmak in view of Senecal and Higgins and further in view of Sakai. 9 Id. at 9-10. DISCUSSION Appellants separately argue claim 82, claims 123 and 124 (argued together), claims 110, 114, 125, and 127 (argued together), and claims 126, 128, and 129 (argued together). Appeal Br. 3. Claim 82 The Examiner rejected claim 82 (and claims 83, 88, 96, 101, 108-110, 114, 123-125, and 127) as obvious over Cakmak in view of Senecal and Higgins. Final Act. 4--7. In support of the rejection, the Examiner made several findings. The Examiner determined that Cakmak teaches electrospinning a polymer composition into a cast polymer film. Id. at 4 ("Cakmak teaches that the electrospinning process produces a nanofiber which is embedded in the cast polymer film."). Cakmak describes the electrospinning process as follows: The process of electrospinning generally involves the creation of an electrical field at the surface of a liquid. The resulting electrical forces create a jet of liquid which carries an electrical charge. These electrically charged jets of liquid may be 8 Griffin et al., US 3,360,394; issued Dec. 26, 1967 (hereinafter "Griffin"). 9 Sakai et al., US 5,679,456; issued Oct. 21, 1997 (hereinafter "Sakai"). 4 Appeal2017-008954 Application 13/383,988 attracted to a body or other object at a suitable electrical potential. As the liquid jet is forced farther and farther toward the object, it elongates. As it travels away from the liquid reservoir, it steadily dries and hardens, thereby forming a fiber. Cakmak, 2. The Examiner further determined that Cakmac teaches that "[t]he film is porous (i.e. it has open spaces between the fibers)." Final Act. 5-6. The Examiner relies upon the second cited reference, Senecal, for its teaching that the nanofiber film may be made conductive by the addition of carbon nanotubules. Id. The Examiner determines that "Cakmac in view of Senecal does not teach that the film is transparent." Id. at 6. The Examiner finds that the third reference, Higgins "teaches a transparent polymer coating applied to textiles and clothing to provide a transparent protective layer." Id. In the context of claims 123 and 124, the Examiner determines that, "since the film of Cakmak in view of Senecal and Higgins is transparent, the refractive index of the nanofibers must match the refractive index of the film in order to retain transparency." Id. at 7. Appellants argue that the rejection is in error because "Cakmak does not provide nanofibers that define open spaces to retain transparency." Appeal Br. 6. Appellants further assert that the Examiner's hypothetical combination does not teach transparency because, "[ w ]hile the coating [taught by Higgins] may be transparent, the textile end product as a whole is not taught to be transparent." Id. The Examiner's proposed hypothetical combination provides for a transparent polymer film with embedded nanofibers that is layered on a textile. Answer 9-10. The Examiner does not, however, determine that the textile layer is required by the claim. Id. at 11 ("The transparency or lack 5 Appeal2017-008954 Application 13/383,988 thereof of the underlying textile is not pertinent to any limitation in any asserted claim."). Appellants assert that each independent claim requires the combination of polymer film and electrospun nano fibers to be transparent. Reply 2. Appellants "strongly traverse" any contrary construction and present argument that the film including the nano fibers (not the textile) must be transparent. Id. This does not, however, seem to be at issue. Appellants further argue that Cakmak does not teach "open spaces that are sufficient to provide the retention of the transparency of the claimed polymer film." Appeal Br. 6. Appellants assert that the porosity of Cakmak does not imply transparency. Id. This is insufficient to rebut the Examiner's finding that Cakmak teaches "open spaces between the [ nano ]fibers" and that because "the film of Cakmak in view of Senecal and Higgins is transparent, the refractive index of the nanofibers must match the refractive index of the film in order to retain transparency." Final Act. 5, 7; see also In re Spada, 911 F.2d 705, 708 (Fed. Cir.1990) ("[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."). Claim 82 additionally requires that "the flexible, transparent, and electrically conductive polymer film is suitable for use in a flexible display application." Appeal Br. 10 (Claims App.). The Examiner determines that this limitation is met by Cakmak's teaching that "various flexible photonic display technologies ... will benefit from this technology." Cakmac 16; see also Answer 11. We discern no error in such determination. 6 Appeal2017-008954 Application 13/383,988 Claims 123 and 124 Claims 123 and 124 were rejected on the same basis as claim 82. Final Act. 7. In regard to claims 123 and 124, the Examiner determined that "since the film of Cakmak in view of Senecal and Higgins is transparent, the refractive index of the nanofibers must match the refractive index of the film in order to retain transparency." Final Act. 7; see also Answer 5. The Examiner additionally determined that "since the nanofiber and polymer film of Cakmak in view of Senecal and Higgins are the same as the nanofiber and polymer film of the instant application, the refractive indices of the nanofibers and polymer film would be expected to match." Final Act. 7; see also Answer 5---6. In asserting error, Appellants argue that "the Examiner has not shown how a transparent coating of Higgins on non-transparent fibers of Cakmak can achieve a transparent end product." Appeal Br. 7. This represents a factual dispute as to whether or not Cakmak teaches transparent fibers. As discussed above in regard to claim 82, Appellants have not introduced evidence or argument sufficient to rebut the Examiner's finding that Cakmak teaches "open spaces between the [ nano ]fibers" and that "the film of Cakmak in view of Senecal and Higgins is transparent." Final Act. 7; see also Answer 10 ( determining that combining the teachings of Higgins and Cakmak would yield a coating that "permits the underlying [textile] to be visible."). Appellants rely on attorney argument to rebut the Examiner's findings. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) ("[U]nsworn attorney argument ... is not evidence and cannot rebut ... other admitted evidence."); Estee Lauder, Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (an argument made by counsel in a brief does not substitute for evidence lacking in the record.). 7 Appeal2017-008954 Application 13/383,988 Claims 110, 114, 125, and 127 Claims 110, 114, 125, and 127 each require a certain content of electrically conductive material in the electrospinnable polymer compositon. Appellants assert that they "do[] not see in the Final Office Action where these claims are addressed." Appeal Br. 8. These limitations were, however, addressed by the Examiner in the Final Action. See Final Act 5; see also Answer 11. Accordingly, Appellants have not shown error in this regard. Claims 126, 128, and 129 Claims 126, 128, and 129 are dependent claims which each require that the "electrically conductive polymer film includes nanofibers in an amount less than 1 weight percent." Appeal Br. 13 (Claims App.). The Examiner rejected such claims over Cakmak in view of Senecal and Higgins and further in view of Sakai. Final Act 9. The Examiner relies upon Sakai for its teaching of "a polymer film containing fibers in an amount of 0.5-90 % by weight" where "[t]he fibers reinforce the polymer structure." Id. at 10. The Examiner determined that a person of ordinary skill in the art would have been motivated by Sakai to add the claimed amount of conductive nano fibers to the film of the hypothetical combination to achieve adequate structural reinforcement. The Examiner further cites to Cakmak' s teaching that "[t]he present invention is capable of producing very thin nanofiber reinforced hybrid films." Answer 12 (citing Cakmak 11). Appellants argue that one of skill in the art would not have looked to the teachings of Sakai regarding quantity of fiber included in the film at issue. They assert that Sakai is taught to be applicable to "reinforced 8 Appeal2017-008954 Application 13/383,988 thermoplastic resins" which differ from the porous filtration films of Cakmak. Appeal Br. 8. Appellants further argue that the fibers of Sakai are not taught to be electrospun, thus, Sakai has little applicability and one of skill in the art would have had no reasonable expectation of success in combining the teachings of Sakai with those of Cakmak, Senecal, and Higgins. Id. at 9. We find Appellants' arguments persuasive. Sakai teaches fibers for use for structural purposes. The present invention ( and cited references) employ fibers to impart other properties (such as filtration or conductivity). When evaluating the appropriate amount of nanofibers to be added to impart such properties, one would not look to a reference teaching the amount to be used for structural stability. Accordingly, Appellants have demonstrated error in the rejection of these claims. CONCLUSION The rejections of claims 82, 83, 88, 96, 101, 108-110, 114, and 120-125 are affirmed. The rejection of claims 126, 128, and 129 is reversed. 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-IN-PART 9 Copy with citationCopy as parenthetical citation