Ex Parte Drzal et al

Patent Trial and Appeal Board

Aug 10, 2016

12587645 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/587,645 10/09/2009
8131 7590 08/11/2016
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
FIRST NAMED INVENTOR
Lawrence T. Drzal
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.
MSH-677 4913
EXAMINER
YOUNG, WILLIAM D
ART UNIT PAPER NUMBER
1761
MAILDATE DELIVERY MODE
08/11/2016 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 LAWRENCE T. DRZAL and SANJIB BISWAS
Appeal2014-006183
Application 12/587,645
Technology Center 1700
Before CHUNG K. PAK, DONNA M. PRAISS, and JULIA HEANEY,
Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
.6. .... ,1 .... ,....,-TTr-11"\l\1,....Al,"1 C- "1 • ,• £'"1• Appeuants' appeal unaer j) u.~.L. s U4 me rma1 reJecuon or crnnns
1-20 under 35 U.S.C. § 102(e) and do not argue the rejection of claims 8-
10, 19, and 20 under 35 U.S.C. § 112, second paragraph. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants' invention is said to be directed to "electrically conductive
optically transparent films of exfoliated graphite nanoparticles (EGN)."
Spec. ,-r 2.
1 The real party in interest is identified as Xg Sciences, Inc., Lansing,
Michigan.
Appeal2014-006183
Application 12/587,645
Independent claim 1 is illustrative (key limitations in dispute
italicized):
1. An exfoliated graphite nanoparticle (EGN) film
compnsmg:
[(a)] a monolayer EGN film comprising (i) exfoliated graphite
nanoparticles and (ii) a first polyelectrolyte distributed
throughout the mono layer EGN film, or (b) a multilayer EGN
film comprising a plurality of the mono layer EGN films arranged
in a layered configuration; wherein:
the monolayer EGN film has a thickness ranging from about 0.2
nm to about 20 nm;
the monolayer EGN film has an electrical conductivity of at least
about 80 Siem; and
the monolayer EGN film has a transparency in the visible
electromagnetic spectrum of at least about 25%.
App. Br. 8 (Claims App'x). Claim 11, the only other independent
claim, differs from claim 1 in that it recites ( 1) a mono layer EGN film
comprising exfoliated graphite nanoparticles without further reciting a
polyelectrolyte, (2) a conductivity value of "at least about 100 Siem,"
and (3) a transparency value of "at least about 35%." Id. at 9.
The Examiner maintains the following grounds of rejection:
claims 8-10, 19, and 20 stand rejected under 35 U.S.C. § 112, second
paragraph, for indefiniteness; and
claims 1-20 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Kotov et al. (US 2011/0250427 Al, published October 13, 2011). Ans. 3, 5.
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Appeal2014-006183
Application 12/587,645
ISSUES2
Did the Examiner reversibly err in finding that Kotov clearly and
unequivocally teaches "a monolayer EGN film" having "a thickness ranging
from about 0.2 nm to about 20 nm" and "a transparency in the visible
electromagnetic spectrum of at least about 25%" as recited in claim 1 and
that "the conductivity of the film of Kotov et al is inherently the same as the
conductivity of the invention"? We decide this issue in the affirmative.
FINDINGS OF FACT AND ANALYSES
After thoroughly reviewing the arguments of both the Appellants and
the Examiner, we find the preponderance of evidence supports the
Appellants' position that Kotov fails to anticipate the claimed invention.
The Examiner finds that Kotov discloses "a single or multi-layered
film comprising graphite nanoparticles and a polyelectrolyte." Ans. 4 (citing
Kotov i-f 91 ). The Examiner further finds that Kotov discloses a film
"composed of nanometer-thick monolayers of oppositely charged
compounds" (citing Kotov i-f 80), "a transparency of 50-90%" (citing Kotov
i-f 151), and "[a] single layer of the film has a thickness of 1-3 nm" (citing
Kotov i-f 108). Ans. 4. With respect to the claimed conductivity of "at least
80 S/ cm" recited in claim 1 and "at least 100 SI cm" recited in independent
claim 11, the Examiner finds that "the composition and structure of the film
taught by Kotov et al is the same as the composition and structure of the film
2 We summarily affirm the indefiniteness rejection under 35 U.S.C. § 112,
second paragraph. The Appellants acknowledge, but do not argue the merits
of, the indefiniteness rejection in the Brief, stating that "Appellant will re-
draft said rejected claims upon a successful appeal." App. Br. 4. Thus,
Appellants have waived substantive argument in this proceeding.
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Appeal2014-006183
Application 12/587,645
of the invention, therefore, the conductivity of the film of Kotov et al is
inherently the same as the conductivity of the invention." Id. at 5.
Appellants argue that the Examiner erred in rejecting the claims
because:
Kotov deals with many varied films, and the examiner has picked
and chosen from the disclosures of each of such films to provide
the disclosures for rejecting the instant claims, when in fact, the
disclosures noted by the examiner do not apply across all of the
films disclosed by the reference.
Br. 4--5. Appellants further argue that "the films of Kotov are not based on
'graphite nanoparticles', as the examiner maintains, as the disclosure in
paragraph 0091, at page 6, beginning at line 19, does not disclose graphite
nanoparticles." Id. at 5. According to Appellants, "the graphene disclosed
in Kotov is a single sheet that is one atom thick while the materials of the
instant invention, being exfoliated, are on the order of 10 to 20 nanometers
thick." Id. at 6. Regarding the claimed conductivity, Appellants assert that
the examiner's finding "is pure speculation" because "there is no proof that
the composition and films are the same as those of Kotov et al." Id. at 7.
In response, the Examiner finds that graphene sheets are exfoliated
graphite nanoparticles as supported by Hamilton et al. (US 2013/0075650
Al; published Mar. 28, 2013) as well as the instant Specification which
states "[t]he exfoliated graphite nanoparticles (EGN) material according to
the disclosure generally includes a single graphene sheet or multiple
graphene sheets stacked and bound together." Ans. 6 (quoting Spec. i-f 47)
(citing Hamilton i-f 123-24). The Examiner further responds that the claimed
films are not on the order of 10 to 20 nanometers as asserted by Appellants,
but, rather, 0.2 to 20 nanometers. Id. at 7. According to the Examiner,
"[ s ]ince Kotov teaches that the thickness of a mono layer film is about one
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Appeal2014-006183
Application 12/587,645
nanometer (par. 80), the limitation with respect to film thickness is
anticipated." Id. Regarding conductivity, the Examiner maintains that the
limitation is met because the compositions are the same. Id.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). "Inherency ... may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Oelrich, 666 F.2d 578, 581 (CCPA
1981 ). On this record, the Examiner does not find that Kotov inherently or
clearly and unequivocally discloses exfoliated graphite nanoparticles in the
form of a monolayer film of about one nanometer thick having the
conductivity recited in claims 1-20. The Examiner does not explain
adequately how one skilled in the art would understand "clearly and
unequivocally" that Kotov teaches the combination of the selected features
of paragraphs 80, 91, 108, and 151 in order to arrive at an exfoliated graphite
nanoparticle film having the claimed properties of thickness, transparency,
and conductivity. For Kotov to be said to anticipate claims 1-20, the
reference:
must clearly and unequivocally disclose the claimed [product]
or direct those skilled in the art to the [product] without any
need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited
reference. Such picking and choosing may be entirely proper in
the making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
the similarity of the subject matter which he claims to the prior
art, but it has no place in the making of a 102, anticipation
rejection.
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Appeal2014-006183
Application 12/587,645
In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972) (cited with approval
in NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed Cir.
2008)); see also In re Schaumann, 572 F.2d 312, 315 (CCPA 1978)
(explaining that a prior art reference must identify each and every
element as set forth in the claim "with sufficient specificity to
constitute a description thereof within the purview of 35 U.S.C.
§ 102"). On this record, the general teaching in Kotov of "nanometer-
thick monolayers of oppositely charged compounds (e.g .... charged
nanoparticles ... ) to form a multilayered structure" (Kotov i-f 80) and
the specific examples of poly( vinyl alcohol) (PVA) and
Montmorillonite clay (MTM) having nanometer thick layers (Kotov
i-f 108) and 50-90% transparency (Kotov i-f 151) do not teach
unequivocally that the nanoparticles of graphene sheets listed among
many other nanoparticles (Kotov i-f 91) have the thickness,
transparency, and conductivity required by independent claims 1 and
11. See, e.g., Atofina v. Great Lakes Chemical Corp., 441F.3d991,
999 (Fed. Cir. 2006) ("Given the considerable difference between the
claimed range [of 330 to 450 °C] and the range [of 100 to 500 °C] in
the prior art, no reasonable fact finder could conclude that the prior art
describes the claimed range with sufficient specificity to anticipate
this limitation of the claim.") The Examiner correctly finds that the
Specification discloses "[t]he exfoliated graphite nanoparticle (EGN)
material according to the disclosure generally includes a single
graphene sheet or multiple graphene sheets stacked and bound
together" (Spec. i-f 47), however, the Specification also discloses that
the properties of conductivity, thickness, and transparency are
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Appeal2014-006183
Application 12/587,645
interdependent (id. at i167). Therefore, absent a specific disclosure in
Kotov of a graphene sheet having the claimed thickness and
transparency, the films of Kotov do not clearly and unequivocally
possess the claimed conductivity. While the Examiner's findings may
be sufficient for an obviousness rejection, we agree with Appellants
that claims 1-20 are not anticipated by Kotov.
Accordingly, on this record, we reverse the Examiner's 35
U.S.C. § 102 rejections of claims 1-20 and affirm the Examiner's
indefiniteness rejections of claims 8-10, 19, and 20.
DECISION
We reverse the Examiner's 35 U.S.C. § 102 rejections of claims 1-20-
and affirm the Examiner's indefiniteness rejections of claims 8-10, 19, and
20. The Examiner's decision is AFFIRMED-IN-PART.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED-IN-PART
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