Ex Parte Jayaraman

Patent Trial and Appeal Board

Oct 31, 2017

12363162 (P.T.A.B. Oct. 31, 2017)

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.
12/363,162 01/30/2009 Shrisudersan Jayaraman SP09-011 1456
22928 7590 11/02/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1 RIPA, BRYAN D
CORNING, NY 14831
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHRISUDERSAN JAYARAMAN
Appeal 2017-000488
Application 12/363,162
Technology Center 1700
Before MICHAEL P. COLAIANNI, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 3—5, 7—15, and 17—29. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to the Specification filed January 30, 2009
(“Spec.”), the Final Office Action mailed May 21, 2015 (“Final Act.”), the
Appeal Brief filed January 15, 2016 (“Br.”), and the Examiner’s Answer
mailed August 10, 2016 (“Ans.”).
2 Appellant identifies the real party in interest as Coming Incorporated.
Br. 2.
Appeal 2017-000488
Application 12/363,162
The claims are directed to an electrochemical method of making
nanostructures. Claim 1, reproduced below from the Claims Appendix of
the Appeal Brief, is illustrative of the claims on appeal.
1. A method of making nanostructures, the method comprising:
providing an electrolytic cell, which comprises an anode
and a cathode disposed in hydroxide electrolyte, wherein the
hydroxide is selected from sodium hydroxide, potassium
hydroxide, and combinations thereof, and wherein the anode or
the cathode comprise a surface exposed to the electrolyte;
agitating the electrolyte, and
applying constant electrical potential to the electrolytic
cell for a period of time sufficient to obtain nanostructures on
the surface of the anode or the cathode exposed to the
electrolyte, wherein the potential is 5.0 volts or less, wherein
the surface of the anode or the cathode exposed to the
electrolyte comprises a metal oxide, a mixed metal oxide, a
metal alloy oxide, or combinations thereof.
Br. 21 (Claims Appendix).
DISCUSSION
The Examiner maintains the rejection of claims 1, 3—5, 7—15, and 17—
293 under 35 U.S.C. § 112, first paragraph as non-enabled.4 Final Act. 3.
Specifically, the Examiner finds that while being enabling for the formation
of nanostructures in which the anode or cathode comprises a conductive
3 Claim 29 is not listed in the statement of rejection in the Final Action
(Final Act. 3); however, claim 29 is included in the body of the rejection {id.
at 7—8). Thus, we consider the omission of claim 29 in the statement of
rejection as a typographical error. Moreover, Appellant recognizes that
claim 29 is included in the § 112, first paragraph rejection. Appeal Br. 10.
4 The rejection of claims 1, 3—5, 7—15, and 17—29 under 35 U.S.C. § 101 set
forth in the Final Action was withdrawn by the Examiner in the Answer.
Ans. 8.
2
Appeal 2017-000488
Application 12/363,162
surface of either a valve metal or valve metal to produce oxide
nanostructures, the Specification does not reasonably provide enablement for
a method of making nanostructures in which: (1) the surface of the anode or
the cathode upon which the nanostructures are to be formed comprise a
metal oxide, a mixed metal oxide, a metal alloy oxide, or combinations
thereof (claim 1); or (2) the nanostructures being formed consisting of a
metal oxide, a mixed metal oxide, a metal alloy, a metal hydroxide, or
combinations thereof (claim 3). Id.
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the Specification does not enable
one skilled in the art to perform the full scope of the method of claim 1
without undue experimentation. We sustain the Examiner’s § 112, first
paragraph rejection essentially for the reasons set out by the Examiner in the
Final Action and Answer. We add the following.
When rejecting a claim for lack of enablement, “the [United States
Patent and Trademark Office] bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application . . . .” In re Wright,
999 F.2d 1557, 1561—62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d
220, 223—24 (CCPA 1971)). “[T]o be enabling, the specification of a patent
must teach those skilled in the art how to make and use the full scope of the
claimed invention without ‘undue experimentation.’” Wright, 999 F.2d
1561. The “undue experimentation” analysis involves the consideration of
such factors as: (1) the quantity of experimentation; (2) the amount of
3
Appeal 2017-000488
Application 12/363,162
direction or guidance presented; (3) the presence or absence of working
examples; (4) the nature of the invention; (5) the state of the prior art; (6) the
relative skill of those in the art; (7) the predictability or unpredictability of
the art; and (8) the breadth of the claims (the “Wands factors”). In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
After considering the Wands factors, we find that on this record, a
preponderance of the evidence supports the Examiner’s conclusion that
undue experimentation would have been required to perform the claimed
method for the formation of nanostructures from a metal oxide surface on
either an anode or cathode.
The claimed method requires applying electrical potential to the
electrolytic cell for a period of time sufficient to obtain nanostructures on the
surface of the anode or cathode exposed to the electrolyte. Claim 1. As the
Examiner finds, for electrochemical treatment of the respective electrode
surfaces to be capable of making nanostructures, the electrode surface must
be electrically conductive because the electrochemical reaction at the
electrode surface is made possible through the transfer of electrons. Final
Act. 3. However, not all metal oxides are conductive, as evidenced by
Berthelot et al. (US 2010/0310800 Al, published December 9, 2010). Final
Act. 3^4.
Moreover, as evidenced by Omasa (US 2005/0011765 Al, published
January 20, 2005) (“Omasa”) and Loftfield et al. (US 3,853,738, issued
December 10, 1974) (“Loftfield”), the state of the art with respect to the
operation of anode charged metal oxide surfaces is unpredictable. Ans. 12.
Specifically, the Examiner finds, and Appellant does not dispute that,
Loftfield teaches using various metal oxides coatings on anodes because the
4
Appeal 2017-000488
Application 12/363,162
coatings are dimensionally stable, i.e., would not result in any change of
shape or form at the electrode surface. Compare Ans. 10-11 (citing
Loftfield 1:10-44) and Final Act. 4—5 with Appeal Br. 13—14. Although
Loftfield’s coated electrodes are used in chlorine production, Loftfield also
teaches that the anode can be used in other electrolysis cells and for other
purposes. Loftfield 1:17—21. In addition, the Examiner finds that Omasa
teaches an electrolytic process employing conductive metal oxide coated
anodes with a hydroxide electrolyte, agitating the electrolyte, and applying a
direct current to the electrolytic cell. Final Act. 5 (citing Omasa H 13, 118,
121, 124, 232, 249). Omasa’s process results in water electrolysis or the
generation of oxygen and hydrogen gas, not nanostructures, at the respective
anode and cathode. Omasa 1126. Thus, we agree with the Examiner that
Omasa and Loftfield demonstrate the unpredictability in the art regarding
electrolytic treatment of metal oxide surfaces forming nanostructures. Final
Act. 6.
Further, the claimed method would apply broadly to both anodes and
cathodes, i.e. electrodes having either a positive or negative charge,
comprising a surface having any type of metal oxide to form the claimed
nanostructures. Final Act. 6. However, as the Examiner finds, the
Specification does not provide any working examples in which
nanostructures are formed from an oxide metal surface of an anode or
cathode. Final Act. 6. Rather, the Specification only provides examples of
forming oxide nanostructures from metal electrode surfaces. Id.:
Spec. 11 61-91.
5
Appeal 2017-000488
Application 12/363,162
In sum, the breadth of the claims in comparison to the working
examples, as well as the unpredictability of the art, all weigh against the
enablement of the claims.
We have considered 138 of the Specification cited by Appellant as
support for the enablement of the claims. Although this paragraph
specifically names cobalt oxide as an example of metal oxide on the surface
of an electrode, we agree with the Examiner that the paragraph is not
teaching or providing sufficient guidance regarding the conditions
employed, the concentration of the electrolyte, time of treatment, etc.,
employed to form nanostructures on the surface of the metal oxide surface of
the electrode, either an anode or a cathode. Ans. 13—14. Consequently, this
paragraph in Appellant’s Specification does not provide sufficient guidance
related to the practice of the full scope of the claimed method. In re
Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (“[T]he specification must
teach those of skill in the art ‘how to make and how to use the invention as
broadly as it is claimed.”’); In re Fisher, 427 F.2d 833, 839 (CCPA 1970)
(“[T]he scope of the claims must bear a reasonable correlation to the scope
of enablement provided by the specification to persons of ordinary skill in
the art.”). Moreover, in view of the additional evidence of record regarding
unpredictability in the art, discussed above, the cited paragraph would not
have been sufficient to allow one of ordinary skill in the art to be able to
make and use the full scope of the method recited in claims 1 (and claim 3)
without undue experimentation. Ans. 13—14.
Appellant’s argument that the Examiner failed to establish a prima
facie case of non-enablement is not well-taken. Appeal Br. 13. Based on
the Examiner’s detailed consideration of the Wands factors in the Final
6
Appeal 2017-000488
Application 12/363,162
Action (Final Act. 3—8), we find the Examiner has provided a reasonable
basis to question the enablement provided for the claimed invention. Thus,
the burden has been shifted to Appellant to present persuasive arguments
supported by suitable evidence that one of ordinary skill in the art would
have been able to make and use the full scope of the claimed invention using
Appellant’s Specification coupled with information known in the art,
without undue experimentation. On this record, Appellant has not presented
persuasive arguments supported by adequate evidence to overcome the
Examiner’s prima facie case of enablement. The Declaration under
37 C.F.R. § 1.132 of Dr. Shrisudersan Jayaraman (“Jayaraman Declaration”)
executed on August 20, 2015, presents similar arguments as raised in the
Appeal Brief. See generally Decl. We do not find the opinions presented in
the Jayaraman Declaration to be sufficiently supported by other evidence of
record to rebut the Examiner.
Appellant argues that the Omasa reference shows that other reactions
may occur at the electrode surfaces, but is insufficient to refute the formation
and deposition of nanostructures on the electrode surface. Appeal Br. 13.
Appellant’s argument is not persuasive of reversible error in the
Examiner’s rejection. As the Examiner clarifies in the Answer, the
Examiner finds that Omasa establishes what would have been understood by
one of ordinary skill in the electrolysis art and provides evidence of the
unpredictability of the operation of the anode charged metal oxide surfaces
for at least the metal oxides that are catalytically active. Ans. 12. In
addition, the Examiner finds that one of ordinary skill in the electrolysis art
would not expect Omasa’s process to form nanostructures at the chemically
7
Appeal 2017-000488
Application 12/363,162
inert anode surface. Id. Appellant does not refute these findings set forth in
the Answer.
We have carefully considered Appellant’s arguments, but we are not
persuaded of reversible error in the Examiner’s enablement analysis.
Accordingly, we affirm the Examiner’s rejection of claims 1, 3—5, 7—15, and
17—29 for lack of enablement.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3—5, 7—
15, and 17—29 is affirmed.
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
8