Ex Parte Gorzkowski et al

Patent Trial and Appeal Board

Mar 10, 2016

12614696 (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/614,696 11109/2009
26384 7590 03/10/2016
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
Edward P. Gorzkowski III
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.
99668-US2 9078
EXAMINER
RAMASWAMY,ARUN
ART UNIT PAPER NUMBER
2848
MAILDATE DELIVERY MODE
03/10/2016 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 EDWARD P. GORZKOWSKI, III and MING-JEN PAN 1
Appeal2014-005719
Application 12/614,696
Technology Center 2800
Before BRADLEY R. GARRIS, MICHAEL P. COLAIANNI, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejections of claims 2, 4---6, and 8-10 under 35 U.S.C. § 102(b) as
anticipated by Gorzkowski et al. (Novel Ceramic-Polymer Composites via
Freeze Casting Method, Naval Research Laboratory, Multifunctional
Material Branch, Washington, DC 20375, 2007) (hereinafter "Gorzkowski")
and claims 3 and 16 under 35 U.S.C. § 103(a) as unpatentable over
1 The Government of the United States of America as represented by the
Secretary of Navy is identified as the real party in interest. App. Br. 2.
Appeal2014-005719
Application 12/614,696
Gorzkowski in view oflwanaga (US 7,304,830 B2 issued December 4,
2007).
We AFFIRM.
Appellants claim a composite made by a method comprising using a
cooling element to form ice platelets in an aqueous slurry of dielectric
material, wherein the cooling element is templated to promote the formation
of ice platelets that are parallel to each other, subliming the ice platelets to
create voids, sintering the dielectric material, and filling the voids with a
polymeric material (independent claim 4 ).
A copy of representative claim 4, taken from the Claims Appendix of
the Appeal Brief, appears below.
4. A composite made by a method comprising:
placing between a cooling element and an opposing surface a slurry
compnsmg:
a powder of a dielectric material, a dispersant, a binder, and water;
maintaining the cooling element at a temperature below the opposing
surface to cause the formation of ice platelets perpendicular to the surface of
the cooling element and having the powder between the platelets;
wherein the cooling element is templated to promote the formation of
ice platelets that are parallel to each other;
subliming the ice platelets to create voids;
sintering the powder to form a sintered dielectric material; and
filling the voids with the polymeric material.
Appellants' arguments are specifically directed to claim 4 only (App.
Br. 3-5). Therefore, the remaining claims under rejection will stand or fall
with representative claim 4.
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Appeal2014-005719
Application 12/614,696
We sustain the above rejections because we agree with the Examiner
that the composite defined by claim 4 is indistinguishable from the
composite disclosed by Gorzkowski.
Appellants point out that the cooling element of Gorzkowski is not
templated (id. at 3) and argue that, as a consequence, Gorzkowski's cooling
element would not promote the formation of ice platelets that are parallel to
each other (id.). Appellants further argue that a composite made with a non-
templated cooling element would not have the parallel configuration and
higher dielectric constant of a composite made with a templated cooling
element (id. at 4). Finally, Appellants argue that the ice platelets of
Gorzkowski are not taught to be parallel to each other (id.).
Contrary to Appellants' belief, Gorzkowski repeatedly discloses that
the intermediate ice platelets and the ultimate composite product have a
11 1 I"'" ' • / A.. 1 ' / • -1 ~t ' "- T ' 1 ' • 1 para11e1 connguranon ~see, e.g., Aost. ~i.e., l "' semence J, imroaucnon ana
Background (i.e., the bottom half showing and teaching parallel
configurations and arrangements), Conclusions (i.e., pt sentence)).
Furthermore, Appellants' own Specification discloses that the composite
embodiment of Figures 3 and 4 was formed without templating (Spec. i-f 44)
and yet included "parallel plates" (id. at i-f 37). In addition, we emphasize
the Examiner's point that the Specification defines the term "parallel" as an
approximation wherein the angle may vary from the ideal by as much as 20°
(Spec. i-f 29) (Ans. 8). We also emphasize that claim 4 merely requires that
the formation of parallel ice platelets be promoted without requiring the
actual achievement of any particular decree of parallelism.
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Appeal2014-005719
Application 12/614,696
Under these circumstances, it is reasonable and consistent with the
Appellants' Specification to interpret claim 4 as encompassing ice platelets
having a parallel configuration formed with a non-templated cooling element
as disclosed by Gorzkowski. Analogously, it is reasonable and consistent
with the Specification to interpret claim 4 as encompassing a composite
made without templating such as the composites of Gorzkowski and of
Appellants' Figures 3 and 4. We recognize that templating may result in a
composite having "slightly higher dielectric constant (compared to Fig. 4
without templating) due to the extra dimension of alignment" (Spec. i-f 44).
However, claim 4 does not require any such extra dimension of alignment.
To the contrary and as explained earlier, claim 4 merely requires the
promotion, rather than the actual achievement, of ice platelets that are
parallel and any such "parallel" ice platelets that are actually formed may
vary from a 0° angle by as much as 20° (Spec. i-f 29).
For these reasons, Appellants' arguments fail to reveal error in the
Examiner's finding that the composite of claim 4 is anticipated by the
composite of Gorzkowski.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connect with this
appeal may be extended under 35 C.F.R. § 1.136(a).
AFFIRMED
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