Ex Parte Green et al

Patent Trial and Appeal Board

Oct 10, 2017

12378260 (P.T.A.B. Oct. 10, 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.
12/378,260 02/12/2009 Martin C. Green 2007617CIP 4309
65672 7590 10/12/2017
T AW nF.PARTMF.NT EXAMINER
CABOT CORPORATION MANGOHIG, THOMAS A
157 CONCORD ROAD
BILLERICA, MA 01821 ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/12/2017 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):
iplaw@CABOTCORP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN C. GREEN, ROSCOE TAYLOR,
GEOFFREY D. MOESER, AGATHAGELOS KYRLIDIS, and
RAYMOND M. SAWKA
Appeal 2016-005745
Application 12/378,260
Technology Center 1700
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 18—34, 36 and 39. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Claims 22 and 26 are illustrative of the claimed subject matter
(emphasis added):
22. Porous carbon having (i) a BET nitrogen surface area of from
about 600 to about 1200 m2/g or from about 1500 to about 1800 m2/g, and
(ii) a BET nitrogen surface area:STSA ratio of from 0.95 to LL
Appeal 2016-005745
Application 12/378,260
26. Porous carbon black having an average primary particle size of
from about 35 to about 80 nm, a BET nitrogen surface area of from about
600 to about 1800 m2/g, a total volume of pores between 2 and 100 nm in
size of from about 3.0 to about 5.0 cm3/g as measured by nitrogen desorption
and a BET nitrogen surface area:STSA ratio of from 0.95 to 1.1.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
Claims 18, 19 and 22—25 as being unpatentable over Yoshimura (US
4,631,180, issued Dec. 23, 1986) and Nguyen (US 2002/0189498, published
Dec. 19, 2002);
Claim 20 as being unpatentable over Yoshimura, Nguyen, and Jalen
(US 4,136,059, issued Jan. 23, 1979);
Claim 21 as being unpatentable over Yoshimura, Nguyen, and
Dandekar (US 2006/0000071, published Jan. 5, 2006);
Claims 22—25 as being unpatentable over Warner (US 3,959,008,
issued May 25, 1976) in view of Nguyen and Sudhakar (US 5,556,824,
issued Sept. 17, 1996);
Claim 20 as being unpatentable over Warner, Nguyen and Jalan;
Claim 21 as being unpatentable over Warner, Nguyen, and Dandekar;
Claim 26 is rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Warner, Nguyen and Sudhakar; and
Claims 27-34 and 36 as being unpatentable over Teachout (US
2006/0063872 Al, published Mar. 23, 2006) in view of Warner, Nguyen and
Sudhakar.
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness of the claimed subject matter under 35 U.S.C. § 103. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
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Application 12/378,260
presenting a prima facie case of unpatentability.”). To establish a prima
facie case of obviousness, the Examiner must show that each and every
limitation of the claim is described or suggested by the prior art or would
have been obvious based on the knowledge of those of ordinary skill in the
art or the inferences and creative steps a person of ordinary skill in the art
would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988);
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We need address only independent claims 22 and 26 which each recite
a porous carbon having a specified BET nitrogen surface area range(s) with
the lower end of the range being greater than about 600m2/g and a BET
nitrogen surface area:STSA ratio (BET:STSA) of from 0.95 to l.l.1
In each rejection, the Examiner relies upon either one of Yoshimura or
Warner to teach that carbon blacks having a BET value greater than 600m2/g
are known, and Nguyen as teaching that carbon blacks having an STSA
1 It is noted that based on the definitions of BET surface area and STSA
surface area provided by Appellants, it appears it would be impossible to
have a BET: STSA ratio of less than 1.0, since the STSA surface area
excludes the surface area of microspores included in the BET surface area
(Reply Br. 2; Spec. 143). Nguyen also states that the “t-area [STSA area] of
a carbon product is always less than the BET value” (Nguyen 19), which
means that a ratio of BET to STSA areas cannot be less than 1.0.
Accordingly, it appears that the Specification does not teach one of ordinary
skill how to make and use a carbon black of BET: STSA ratio over the full
scope of the present range of the claims. It is also noted that the definition
of STSA area (t-area) in Nguyen (which shares a common assignee to this
application on appeal) appears to be different from the definition in this
application (compare Reply Br. 2 to Nguyen 19; Nguyen does not
distinguish micropores from mesopores and states that STSA area is “only
the external surface area”, thus ah porosity areas are excluded). However,
these issues are not before us in this appeal.
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Application 12/378,260
value of greater than 400m2/g are known. The Examiner states “[i]t is
constmed that the t-area [i.e., STSA area] greater than or equal to 400 m2/g
disclosed by Nguyen combined with the BET surface area disclosed by
Yoshimura [or Warner] would result in carbon black products having a BET
surface area: STSA ratio that would overlap or include the range recited by
the instant claims” and thus a prima facie case of obviousness exists for
overlapping ranges (Ans. 3; see also Ans. 6 for similar statement regarding
Wamer/Nguyen rejection).
Appellants contend that it is impermissible to pick the BET value
from one carbon black in one reference (Yoshimura or Warner) and combine
it with the STSA value from another reference (Nguyen), because each
carbon black has a BET value and STSA value that are inseparable, and they
are not independently controllable variables (e.g., App. Br. 11). Appellants
further contend that the references fail to teach how carbon blacks having
the claimed features could be produced (Reply Br. 4; Appeal Br. 12
(explaining that prior to Appellants’ instant application, “it was unknown
how to produce a low microporosity carbon black having the claimed
surface area”)). Appellants’ Specification is drawn to a process to
manufacture carbon blacks having the recited characteristics that are
different from carbon black formed from conventional gasification processes
(Spec. H 6, 77). The Examiner does not dispute Appellants’ position that
none of the carbon black examples in Nguyen meet both the claimed ratio
and the claimed BET value (App. Br. 10; Ans. generally).
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed by the prior art, the burden is
on the applicant to prove that the prior art product does not necessarily or
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Application 12/378,260
inherently possess characteristics attributed to the claimed product, and that
it is of no moment whether the rejection is based on § 102 or § 103 since the
burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed
Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, however,
the Examiner has not shown that the product disclosed in the prior art is
substantially the same and/or is produced by substantially the same method
described in Appellants’ Specification so as to shift the burden to Appellants
to prove otherwise. A preponderance of the evidence supports the
Appellants’ position that the Examiner has not shown how the applied prior
art teaches or suggests the claimed carbon black (Reply Br. 3—5; see also
App. Br. 10—13). The Examiner has not directed us to or relied upon any
recognition in the applied prior art for the recited ratio of BET area to STSA
area (while Appellants discuss examples of Nguyen’s Table 1, the
Examiner’s response is to rely upon Nguyen’s “broad disclosure that it is
beneficial for a carbon black to have a t-value that is great than or equal to
400 m2/g” (Ans. 16)). Indeed, the preferred upper limit for the t-value (i.e.,
STSA) value of Nguyen is 500m2/g (|| 20, 31), which would correspond to
a BET area upper limit outside of the claimed range of above 600m2/g when
the claimed ratio is satisfied. The Examiner does not dispute Appellants’
position that Nguyen’s examples illustrate that as the BET surface area
increases, the STSA area deviates further therefrom, moving increasingly
away from the recited BET:STSA ratio’s upper limit of 1.1 (Appeal Br. 11).
In light of these circumstances, a preponderance of the evidence
supports Appellants’ position that the Examiner has not pointed to any
evidence to adequately establish that the applied prior art teaches or suggests
the claimed combination of features for a carbon black as recited in each of
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Appellants’ independent claims. As stated by Appellants, “[t]he Office has
failed to provide any reasoned explanation of how the teachings of the cited
references could be combined to arrive at a carbon black having all of the
claimed features” (Reply Br. 4). Furthermore, the Examiner has not offered
any reasoning based on the skilled artisan’s knowledge or inferences and
creativity employed that would support an obviousness conclusion.
On the record before us, the Examiner has not shown that each and
every limitation of the claim is either described or suggested by the prior art
or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”).
The Examiner does not rely upon any of the other references applied
in the various § 103 rejections or any other rationale to cure these
deficiencies. Accordingly, we reverse all § 103 rejections on appeal.
ORDER
It is ordered that the Examiner’s decision is reversed.
REVERSED
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