Ex Parte Greenhill et al

Patent Trial and Appeal Board

Jul 31, 2017

14039088 (P.T.A.B. Jul. 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.
14/039,088 09/27/2013 Zachary R. Greenhill 031205.0103C1N1 (01857) 9801
127044 7590 08/02/2017
Porzio, Bromberg & Newman P.C.
1200 New Hampshire Ave., NW
Suite 710
Washington, DC 20036
EXAMINER
LAN, YAN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
ipdocketing @ pbnlaw. com
pbn_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZACHARY R. GREENHILL and JOSEPH J. BELBRUNO
Appeal 2016-008289
Application 14/039,0881
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’
rejections under 35 U.S.C. § 103(a) of claims 6—11, 26—28, and 30-41.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM, and designate our affirmance as a new ground of
rejection under 37 C.F.R. § 41.50(b).
1 Greenhill AntiBallistics Corporation is identified as the real party in
interest. App. Br. 1.
Appeal 2016-008289
Application 14/039,088
BACKGROUND
The subject matter on appeal is directed to a protective material that is
designed to diminish the effects of an impact or a shock wave. Spec. 12.
Sole independent claim 26 is illustrative, is taken from the Claims
Appendix of the Appeal Brief, and appears below.
26. A sports protective equipment device, comprising:
a base member; and
a plurality of nanoparticle shock wave attenuating material
layers disposed on the base member, each one of the plurality of
nanoparticle shock wave attenuating material layers comprising:
(i) a gradient nanoparticle layer comprising a plurality of
nanoparticles, each of the plurality of nanoparticles having
one of two or more approximate diameters, wherein the
plurality of nanoparticles are arranged in a gradient array
based on diameter, wherein the diameters are between
approximately 110 nm in diameter and approximately 400
nm in diameter; and
(ii) a carbon allotrope layer disposed in proximity to the
gradient nanoparticle layer, the carbon allotrope layer
comprising a plurality of carbon allotrope members
suspended in a matrix, wherein the carbon allotrope layer
reflects a portion of the shock wave to generate destructive
interference with residual shock energy, wherein the
carbon allotrope members consist essentially of carbon
nanotubes.
App. Br. CA-3 (emphasis added).
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Glatkowski US 2003/0122111 A1 July 3, 2003
Crisco US 7,832,023 B2 Nov. 16,2010
Greenhill, et al. (“Greenhill”) WO 2009/058453 A2 May 7, 2009
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REJECTIONS ON APPEAL2
I. Claims 6—11, 26, 28, and 30-41 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Greenhill and Glatkowski
(Non-Final Act.3 10-29); and
II. Claim 27 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Greenhill, Glatkowski, and Crisco (Non-Final
Act. 29-30).
STATEMENT OF THE CASE
The Examiner finds that Greenhill teaches all of the elements recited
in independent claim 26, except for the claimed carbon allotrope layer which
comprises carbon allotrope members suspended in a matrix, and then relies
on the disclosure of Glatkowski for the deficiency of Greenhill. Non-Final
Act. 10—15. The Examiner finds further that both Greenhill and Glatkowski
teach that their respective layers can be used, inter alia, to shield
electromagnetic radiation. Id. at 13.
The Examiner then concludes that it would have been obvious to the
ordinary skilled artisan to modify Greenhill’s sports protective equipment
device to include the carbon allotrope layer of Glatkowski in order to create
“an improved multilayered composite structure with improved transparency,
RF shielding properties[,] low observability[,] and ESD (i.e. Electrostatic
Discharge) protection.” Id. at 14.
2 The obviousness-type double patenting rejections of claims 6—11, 26—28,
and 30-41 (Non-Final Act. 6—9) have been withdrawn by the Examiner
(Ans. 23—24) and are, therefore, not before us.
3 Non-Final Office Action dated October 13, 2015.
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Application 14/039,088
Appellants make two primary contentions:4
1) No prima facie case of obviousness exists because it would not
have been obvious to modify Greenhill’s device with Glatkowski’s
carbon allotrope layer (App. Br. 21—23; Reply Br. 18—23; 1st
Decl.51130-31); and
2) The Examiner has not properly considered Appellants’ objective
evidence of non-obviousness (App. Br. 10-21; Reply Br. 8—18).
OPINION
Contention 1
Regarding Appellants’ first contention challenging the Examiner’s
prima facie case of obviousness, we are not persuaded that Appellants have
identified reversible error. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir.
4 Appellants present several arguments in the Reply Brief alleging error in
the Examiner’s claim construction (Reply Br. 2—6), and make multiple
arguments against the Examiner’s proffered reasoning to combine the
Greenhill and Glatkowski references that were not first raised in the Appeal
Brief and/or are not responsive to statements made by the Examiner for the
first time in the Answer (Reply Br. 18—23). Because Appellants fail to
explain why such arguments could not have been raised in the Appeal Brief,
we decline to consider them. See, 37 C.F.R. § 41.37 (c)(l)(iv) (“Except as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”); see also Ex parte Borden, 93 USPQ2d
1473, 1477 (BPAI2010) (Informative) (explaining that under the previous
rules, which are similar to the current rules, “the reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
5 BelBruno Declaration dated October 17, 2014.
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Application 14/039,088
2011) (explaining the Board’s long-held practice of requiring Appellants to
identify the alleged error in the Examiner’s rejection).
Appellants urge that the Examiner’s reason for combining Greenhill
and Glatkowski is improper because the Examiner based the combination on
a secondary use for each of the disclosed layers, i.e., RF shielding. App. Br.
22; see also Reply Br. 22. Specifically, Appellants contend that there would
have been no reason to add the electrically conductive film of Glatkowski to
the multilayer composite of Greenhill “when designing sports equipment
with improved shock wave resistance.” App. Br. 22—23. Appellants also
contend that the Examiner’s proffered motivation is “based on
characteristics” (e.g., RF shielding) that are unrelated to the claims but rather
“relate to a completely different layer that is not part of the claimed
invention.” Reply Br. 22. Appellants urge that it would not have been
obvious to combine the references because Greenhill’s gradient
nanoparticles may not be electrically conductive and “would likely have
different electrical conductive properties” than those of Glatkowski. 1st
Decl. 1130-31.
These arguments fail to persuade us of reversible error. The Examiner
finds that Greenhill and Glatkowski each discloses that their layers can be
used to provide shielding from electromagnetic radiation. Non-Final
Act. 13, citing Greenhill 11:28—30, Glatkowski || 40, 41. Regardless of
whether Appellants characterize (App. Br. 22) the RF shielding property as a
“secondary feature” of the individual layers expressly taught in each
reference, “[i]t is well settled that a prior art reference is relevant for all that
it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d 1260,
1264 (Fed. Cir. 1992). We also observe that “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
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nor the avowed purpose of the patentee controls. . . . [A]ny need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
Thus, we discern no reversible error in the Examiner’s reliance on the RF
shielding property taught by each of these references as a basis to combine
them.
Moreover, Appellants have not explained how the RF shielding
property “relate [s] to a completely different layer that is not part of the
claimed invention.” Reply Br. 22; see also App. Br. 23. First, we note that
the claims are open-ended and, thus, allow for additional, unrecited elements
such as an additional layer. Furthermore, Appellants identify copper, nickel,
nickel-iron alloys, aluminum alloys and combinations thereof as potential
RF shielding particles. App. Br. 23; 2nd Deck6115. According to
Appellants’ Specification, however, such metal particles may be part of the
recited gradient nanoparticle layer. Spec. H 87, 106. Thus, because the
claimed gradient nanoparticle layer may contain metal particles, the RF
shielding properties associated with such particles, as taught by Greenhill,
would be inherent. “From the standpoint of patent law, a compound and all
of its properties are inseparable; they are one and the same thing.” In re
Papesch, 315 F.2d 381, 391 (CCPA 1963). We emphasize here that the
nanoparticles contained within Greenhill’s gradient layer structures may also
include metal spheres (See, e.g., Greenhill, 14:21—23, 45:5—6), and that
Appellants have pointed to no objective evidence of record that such metal
6 BelBruno Declaration dated March 12, 2015.
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Application 14/039,088
spheres within the recited diameter ranges (i.e., between 110 nm and 400
nm) are not electrically conductive, or have other properties that would
make them un-combinable with the carbon nanotubes of Glatkowski.
We furthermore observe that Appellants’ arguments against the
combination of references ignores that the Examiner gives no patentable
weight to the recitation of “sports protective equipment” in the preamble of
claim 26 (Non-Final Act. 11—12) and also considers the recited shock wave
reflection to be an intended use {id. at 15). Moreover, we agree with the
Examiner (Ans. 33) that the argument “that sports equipment does not need
an [electronic] conductive film is merely based on opinion and [is] not
supported by factual evidence, and is not convincing.” We also emphasize
that Appellants do not challenge with any specificity the Examiner’s
determination that sports equipment (e.g., a helmet) may need to
communicate electronic signals such as scoring or data associated with the
underlying device. Id. at 32—33.
Thus, on this record, Appellants have not identified how the
Examiner’s proffered reason to combine the Greenhill and Glatkowski
references is erroneous. Accordingly, Appellants have failed to identify
reversible error in the Examiner’s prima facie case of obviousness.
Contention 2
Because Appellants do not identify error in the Examiner’s prima
facie case, we turn to Appellants’ second primary contention, which is that
the Examiner failed to properly consider the objective evidence of secondary
considerations. See generally App. Br. 10-21; Reply Br. 8—18. Our review
of Appellants’ arguments on this point also considers Appellants’ evidence,
and the Examiner’s underlying factual findings anew.
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When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over.
Though the burden of going forward to rebut the prima facie case
remains with the applicant, the question of whether that burden
has been successfully carried requires that the entire path to
decision be retraced. . . .
Facts [established] by rebuttal evidence must be evaluated along
with the facts on which the earlier conclusion was reached, not
against the conclusion itself. Though the tribunal must begin
anew, a final finding of obviousness may of course be reached,
but such finding will rest upon evaluation of all facts in evidence
In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).
Appellants filed two Declarations by Dr. Joseph J. BelBruno—one
dated October 17, 2014 (“1st Deck”) and one dated March 12, 2015 (“2nd
Deck”)—with the October 17, 2014 Declaration containing 3 test sample
sets as follows:
1) A polystyrene gradient nanoparticle layer containing 320nm solid
spheres and 400nm hollow spheres, per the Sample 8 composition
contained in the Specification (Spec, till) situated between two
polycarbonate plates, but containing no carbon allotrope members
and no polymer matrix layer (i.e., polymer “caps”) (1st Decl. ]ff[ 7—
19);
2) The same polystyrene gradient nanoparticle layer as tested in
sample set 1, but with alternating layers of a polymer matrix (i.e.,
1% poly(4-vinyl pyridine (P4VP))), all situated between two
polycarbonate plates (1st Decl. ^fl[ 20-22); and
3) The same polystyrene gradient nanoparticle layer as tested in
sample set 1, but with alternating layers of a polymer matrix
containing carbon nanotubes (i.e., 1% poly(4-vinyl pyridine
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(P4VP)) and 0. 5% carbon nanotubes), all situated between two
polycarbonate plates (1st Decl. Tflf 23—25).
Sample set 1 exhibited a reduction in force of between approximately
2.95% — 3.85% per layer, sample set 2 showed a reduction in force of
approximately 1% per layer, while sample set 3 exhibited a reduction in
force of between 3.19% —4.1%. 1st Decl. H 18,22,25.
It is undisputed that sample set 3 is the closest to the claimed subject
matter. As correctly observed by the Examiner with respect to the secondary
considerations of non-obviousness, “the issue in dispute is what represents
the closest prior art taught by [] Greenhill of which the claimed invention
should be compared to.” Ans. 25.
Appellants contend that, because Greenhill discloses embodiments
which may include a polymer matrix as a binding layer, the closest prior art
to which the claimed invention should be compared is sample set 2. App.
Br. 11—21; Reply Br. 8—18. The Examiner contends, however, that sample
set 1 is the closest prior art. Final Act. 3^4; Ans. 24—31. The Examiner
reasons that sample set 1 is the closest prior art because GreenhilTs binding
layer (corresponding to the tested polymer matrix) is optional. Final Act. 3;
Ans. 26. The Examiner reasons further that the embodiments of Greenhill
having a polymer cap layer are not relied upon as the basis for the rejection
of record, and thus should not be considered the closest prior art
embodiment. Ans. 25, 26, 28—30.
We are persuaded that Appellants have identified error in the
Examiner’s consideration of the proffered evidence of unexpected results
with respect to the Examiner’s identification of the closest prior art.
“[Wjhen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior art.”
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Application 14/039,088
In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). When
considering whether unexpected results have been demonstrated, it is not
sufficient to merely compare the claimed subject matter to any embodiment
disclosed in the closest prior art reference. Rather, a proper determination
compares the claimed invention to the specific embodiment that is closest to
that which is claimed. See, In re Case, No. 98—1531, 1999 WL 682875, at
6-7 (Fed. Cir. Aug. 31, 1999).
This the Examiner did not do. The claims require the presence of “a
carbon allotrope layer disposed in proximity to the gradient nanoparticle
layer, the carbon allotrope layer comprising a plurality of carbon allotrope
members suspended in a matrix.'” App. Br. CA-3 (emphasis added). Such
matrix “may include one or more polymers.” Spec. 1 58. Thus, it follows
that sample set 2 containing a polymer matrix of 1 % P4VP is a closer prior
art embodiment to the claimed subject matter than is sample set 1 which
contains no such polymer matrix.
Moreover, we agree with Appellants (App. Br. 12—13) that it is
permissible for an “applicant to compare the claimed invention with prior art
that is more closely related to the invention than” that which was relied upon
by the Examiner. In re Holladay, 584 F.2d. 384, 386—387 (CCPA 1978).
Thus, it is of no moment which particular embodiment in Greenhill the
Examiner relied upon when crafting the rejection, or whether Greenhill’s
binding layer is or is not a required component of Greenhill.
However, we are compelled to point out that, although the Examiner
erred in considering Appellants’ evidence, “objective evidence of non­
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.” In re Tiffin, 448 F.2d 791, 792 (CCPA
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1971). Here, Appellants’ evidence is not commensurate in scope with the
claimed subject matter.
Specifically, Appellants’ claims include “a gradient nanoparticle layer
comprising a plurality of nanoparticles” wherein the nanoparticles have a
diameter between 110 nm and 400 nm. Appellants’ objective evidence only
addresses one embodiment which contains two sizes of nanoparticles — 320
nm and 400 nm. 1st Decl. H 7—25, Spec. till. The BelBruno Declaration
dated March 12, 2015 opines that “the results found when using the 320/400
nm gradient nanoparticle layer would be comparable to other nanoparticle
sizes in the claimed range,” and expresses the belief that the dissipation of
shock wave energy is “due to the relative size differences, and is not related
to the absolute size of the nanoparticles.” 2nd Decl. H 10—11. Based on
these beliefs, Dr. BelBruno determines that it would be expected that the
results observed for the tested samples “would hold true for the claimed
range of particle sizes from approximately 110 nm to approximately 400
nm.” Id. at 112. Such conclusory statements of belief, however, lack
objective evidentiary support in the record and are, thus, of little value. In re
Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (explaining that opinion
evidence in declarations has little value without factual support).
Furthermore, according to the Specification, the gradient
nanoparticles may be solid, hollow, filled, unfilled, core shell, and/or
combinations thereof (Spec. H 52, 84—87, 103) and the claims do not further
limit this property. Appellants’ evidence, however, only addresses one
combination of gradient nanoparticles containing one plurality of solid and
one plurality of hollow nanoparticles within the gradient layer. 1st Decl.
117-25, Spec. till.
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Application 14/039,088
Moreover, the Specification indicates (Spec. 1106) that the
nanoparticles contained within the gradient nanoparticle layer may be made
of “polymers, metals, ceramics[,] or other materials,” and the independent
claim does not further limit what materials these nanoparticles are composed
of. Appellants’ objective evidence is limited to gradient layer nanoparticles
made of one substance — polystyrene. 1st Decl. Tflf 7—25, 2nd Decl. 113,
Spec. till. In this regard, it does not escape our attention that the
BelBruno Declaration dated March 12, 2015 opines that “using other types
of nanoparticles it would also be possible to achieve similar results when
elastic losses are considered.” 2nd Decl. |13, citing Spec. |146. We again
observe, however, that objectively unsupported, conclusory statements such
as these are entitled to little, if any, weight. In re Beattie, 974 F.2d at 1313.
Moreover, “commensurate in scope” means that the evidence provides a
reasonable basis for concluding that the untested embodiments encompassed
by the claims would behave in the same manner as the tested
embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972):
Here, only one mixture of ingredients was tested. . . .
The claims, however, are much broader in scope,. . . and we
have to agree with the Patent Office that there is no “adequate
basis for reasonably concluding that the great number and
variety of compositions included by the claims would behave in
the same manner as the [single] tested composition.”
(bracketed material in original). Appellants’ opinion testimony that similar
results are “possible,” standing on its own, does not establish a reasonable
basis for concluding that similar results to those realized with polystyrene
would also be expected to be achieved with each of the vast myriad of
materials covered by the claim. We furthermore note that paragraph 146 of
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the Specification which Appellants cite in support of their proposition says
nothing of elastic losses.
Finally, we point out that the claimed carbon allotrope layer is
unlimited with respect to the amount of “carbon allotrope members
suspended in a matrix” that it may contain. Appellants’ evidence, however,
only addresses amounts of 0.5% carbon nanotubes in a matrix of 1%
polymer. The claimed matrix is also unlimited with respect to its
composition, while the evidence only uses a matrix of poly(4-vinyl pyridine)
(“P4VP”). The BelBruno Declaration dated March 12, 2015 opines that the
ordinary skilled artisan “would expect that any matrix forming material
would provide similar results to those found using poly(4-vinyl pyridine).”
2nd Deck 114. Similar to other statements made in this Declaration, this
statement lacks objective evidentiary support in the record. As such, we
afford it little weight. In re Beattie, 91A F.2d at 1313.
CONCLUSION
Appellants have failed to identify reversible error in the Examiner’s
conclusion that it would have been obvious to combine the teachings of
Greenhill and Glatkowski, with or without Crisco, to arrive at the presently
claimed subject matter.
Upon considering anew the underlying factual basis for the
Examiner’s obviousness determination, as well as Appellants’ objective
evidence of non-obviousness, we determine that the arguments and evidence
of record, on balance, weigh most heavily in favor of an obviousness
conclusion for the reasons expressed herein.
We, therefore, sustain the Examiner’s rejections of claims 6—11, 26—
28, and 30-41. Because our reasoning differs from that of the Examiner,
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however, we designate our affirmance as a new ground of rejection under 37
C.F.R. § 41.50(b).
This decision contains a new ground of rejection under 37 C.F.R.
§ 41.50(b) which provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new Evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
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).
AFFIRMED / 37 C.F.R, $ 41.50(b)
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