Ex Parte Zhamu et al

Patent Trial and Appeal Board

Aug 1, 2013

12006209 (P.T.A.B. Aug. 1, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/006,209 01/02/2008 Aruna Zhamu 6280
7590 08/02/2013
Bor Z. Jang
9436 Parkside Drive
Centerville, OH 45458
EXAMINER
MOHADDES, LADAN
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
08/02/2013 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 ARUNA ZHAMU and BOR Z. JANG
____________

Appeal 2012-007769
Application 12/006,209
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
TERRY J. OWENS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-3, 6, and 8-25.
We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A hybrid nano-filament composition for use as an electrochemical
cell electrode, said composition comprising:

a) An aggregate of nanometer-scaled, electrically conductive carbon
filaments that are interconnected, intersected, or percolated to form a porous,
electrically conductive filament network comprising interconnected pores,
wherein said filaments have an elongated dimension and a first transverse
dimension, which is a diameter or a thickness, said first transverse
dimension being less than 500 nm and an aspect ratio of said elongate
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Application 12/006,209

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dimension to said first transverse dimension greater than 10, and wherein
said filaments are carbonized electro-spun fibers; and

b) Micron- or nanometer-scaled coating that is deposited on a surface of
said filaments, wherein said coating comprises an anode active material
capable of absorbing and desorbing lithium ions and said coating has a
thickness less than 20 µm.

The Examiner relies upon the following references as evidence of
obviousness:
Nomura et al. (Nomura) US 2005/0058896 A1 Mar. 17, 2005
Kawakami et al. (Kawakami) US 2006/0040182 A1 Feb. 23, 2006
Burton et al. (Burton) US 2008/0261116 A1 Oct. 23, 2008
Firsich US 2009/0068553 A1 Mar. 12, 2009

Kim et al. (Kim), “Characteristics of Supercapaitor [sic, Supercapacitor]
Electrodes of PBI-based Carbon Nanofiber Web Prepared by
Electrospinning,” Electrochimica Acta 50 pp. 877-881 (2004); available
online at www.sciencedirect.com.

Appellants’ claimed invention is directed to a hybrid nano-filament
composition that is used as an electrochemical cell electrode. The
composition comprises an aggregate of nanometer-scaled, electrically
conducted carbon filaments that are carbonized electro-spun fibers. A
coating which is capable of absorbing and desorbing lithium ions is
deposited on the surface of the filaments.
Appealed claims 1, 2, 6, 13-15, 18, and 25 stand provisionally rejected
on the ground of nonstatutory obviousness-type double patenting over
claims 1-4, 7, 8, and 11-14 of application U.S. Serial No. 12/156, 644.
Appellants have not contested this rejection but have offered to file a
Terminal Disclaimer (see Brief 10, first para.).
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The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1-3, 6, 8-16, and 18-24 over Firsich in view of Kim,
(b) claim 17 over Firsich in view of Kim and Nomura,
(c) claim 25 over Firsich in view of Kim and Kawakami,
(d) claims 1, 3, 6, 8, 9, 12-14, 16, 18, 19, and 22 over Burton in view
of Kim,
(e) claim 17 over Burton in view of Kim and Nomura, and
(f) claim 25 over Burton in view of Kim and Kawakami.
Appellants have not separately argued any particular claim on appeal.
Also, Appellants have advanced the same argument against the two sets of
rejections using Firsich and Burton as primary references. Accordingly, all
the appealed claims stand or fall together with claim 1.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of Section 103 in view of the applied prior
art. Accordingly, we will sustain the Examiner’s rejections for the reasons
set forth in the Answer, and we add the following primary for emphasis.
There is no dispute that both Firsich and Burton disclose electrode
chemical cell electrodes comprising a network of carbon nanofibers coated
with porous silicon. As acknowledged by the Examiner, both references use
vapor-grown carbon nanofibers rather than the presently claimed electro-
spun fibers. However, as set forth by the Examiner, Kim teaches that
carbonized electro-spun fibers “can be easily used for electrodes of
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supercapacitor and secondary battery without further treatments, and
therefore should provide high performance due to their large specific surface
area and low electrical resistivity” (p. 877, sentence bridging cols. 1 and 2).
Accordingly, since Firsich and Burton teach the use of carbon nanofibers for
their high surface area and surface energy properties, we agree with the
Examiner that it would have been obvious for one of ordinary skill in the art
to substitute the electro-spun fibers of Kim for the carbon nanofibers of
Firsich and Burton with the requisite reasonable expectation of success.
Appellants have not advanced a convincing argument for why such a
substitution would be nonobvious to one of ordinary skill in the art.
Appellants rely upon a graph submitted in their response, filed
January 12, 2011, as evidence of synergism and unexpected results attached
to the use of electro-spun fibers. According to Appellants, the graph clearly
demonstrates that an anode obtained with the claimed electro-spun fibers
exhibits a much more stable and longer charge-discharge cycle life than that
obtained with the vapor-grown carbon nanofibers of Firsich and Burton
(Prin. Br. 13, first para.). However, inasmuch as the graph is not part of
either a sworn Declaration or the original Specification, it is accorded little
probative value. Also, Appellants provide no detail how the results of the
graph were obtained.
Moreover, Appellants have not carried their burden of demonstrating
that the superior results would be considered truly unexpected by one of
ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1099 (Fed. Cir.
1986); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Since Kim teaches
that carbon nanofibers produced by electro-spinning exhibit enhanced
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Application 12/006,209

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capacitance and electrical properties, it is incumbent upon Appellants to
establish that the superior results shown in the graph would not have been
expected by one of ordinary skill in the art. It is well settled that just as
unexpected results are evidence of nonobviousness, expected results are
evidence of obviousness. In re Skoll, 523 F.2d 1392, 1397 (CCPA 1975).
Appellants, however, have proffered no such objective evidence pertaining
to what would have been expected by one of ordinary skill in the art when
the vapor grown nanofibers of Firsich and Burton are replaced by the
electro-spun fibers of Kim. We further note that the Evidence Appendix to
Appellants’ Brief lists “[n]one.”
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner 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)(1)(iv).
AFFIRMED

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