Ex Parte Hougham et al

Board of Patent Appeals and Interferences

Jan 27, 2009

10702280 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Gareth Geoffrey Hougham, Xiao Hu Liu,
S. Jay Chey, James Patrick Doyle, Joseph Jr. Zinter,
Michael J. Rooks, Brian Richard Sundlof, and Jon Alfred Casey
____________

Appeal 2008-2787
Application 10/702,280
Technology Center 1700
____________

Decided: January 27, 2009
____________

Before PETER F. KRATZ, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 4, 5, and 17-20. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a particle characterized
by a negative coefficient of thermal expansion (CTE) and an electrical
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Application 10/702,280

contact including such a particle. Appellants state that there is a need for
“relatively inexpensive and highly negative CTE material” (Spec. 2). In this
regard, Appellants note that an “object of the invention is to provide a
negative coefficient of thermal expansion particle that can be dispersed in
any type of material to modify the coefficient of thermal expansion of the
material” (Spec. 3).
Claims 5 and 17 are illustrative and are reproduced below:
5. A negative CTE (coefficient of thermal expansion) particle,
comprising:

an inner shell made of a first material; and

an outer shell surrounding the inner shell, the outer shell made of a
second material, the second material having a lower coefficient of thermal
expansion than that of the first material, wherein the inner shell and the outer
shell enclose a hollow cavity region wherein the hollow cavity region
decreases in volume as a temperature of the negative CTE particle increases
and wherein the hollow cavity region increases in volume as the temperature
of the CTE particle decreases.

17. An electrical contact, comprising:

a matrix elastomer;

at least one conductive particle dispersed in the matrix elastomer; and

at least one negative CTE (coefficient of thermal expansion) particle
dispersed in the matrix elastomer, the at least one negative CTE particle
comprising:

a first bilayer having a first bilayer inner layer and a first bilayer
outer layer; and
a second bilayer having a second bilayer inner layer and a
second bilayer outer layer, the first and second bilayers being joined
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together along perimeters of the first and second bilayer outer layers
and first and second bilayer inner layers, respectively, wherein
the first bilayer and the second bilayer enclose a hollow cavity region,
wherein the first bilayer inner layer and the second bilayer inner layer
are made of a first material and the first bilayer outer layer and the
second bilayer outer layer are made of a second material, wherein the
first material has a greater coefficient of thermal expansion than that
of the second material, and wherein the hollow cavity region
decreases in volume as a temperature of the negative CTE particle
increases and wherein the hollow cavity region increases in volume as
the temperature of the CTE particle decreases.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Deckman 4,380,855 Apr. 26, 1983
Torobin 4,582,534 Apr. 15, 1986
Wang 4,820,503 Apr. 11, 1989

The Examiner maintains the following rejections:
Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Wang. Claims 1, 2, and 5 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Deckman. Claims 1, 2, 4, 5 and 17-20 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Torobin.
Appellants argue all of the claims subject to each of the three
anticipation rejections together as a group with the exception of claims 17-
20, which latter group of claims is argued separately for the third stated
rejection. Accordingly, we select claim 5 as the representative claim on
which we decide this appeal as to the claims subject to the first two stated
rejections. For the third stated rejection, we group claims 1, 2, 4, and 5
together based on the common arguments made against the Examiner’s
rejection of these claims and we select claim 5 as the representative claim
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for this claim grouping. Also, we select claim 17 as the representative claim
for claims 17-20, which claims are argued together as a group with respect
to the third stated rejection.

DISPOSITIVE ISSUES
1. Have Appellants identified reversible error in the Examiner’s
anticipation rejections of representative claim 5 by arguing that the
Examiner’s “factual or technical reasoning to support a finding that a
negative CTE particle having the claimed volumetric expansion/contraction
properties” is furnished by each of the applied references is inadequate not
withstanding the Examiner’s findings that “the relative coefficients of
thermal expansion of the layers” of hollow particles described by each of the
applied prior art references corresponds with that of Appellants’ claimed
particles (App. Br. 10)?
2. Have Appellants identified reversible error in the Examiner’s
anticipation rejection of claims 17-20 based on the Examiner’s failure to
establish that Torobin discloses “an electrical contact formed of an elastomer
matrix having negative CTE particles, as claimed” (App. Br. 18)?

SUMMARY DISPOSITION
We answer issue question No. 1 in the negative and we affirm all of
the anticipation rejections to the extent they apply to claims 1, 2, 4, and 5.
We answer issue question No. 2 in the affirmative and we reverse the
anticipation rejection of claims 17-20 over Torobin.

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PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); accord Glaxo, Inc. v.
Novopharm, Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995). However,
anticipation by a prior art reference does not require that the reference
recognize either the inventive concept of the claimed subject matter or the
inherent properties that may be possessed by the prior art reference. See
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 633 (Fed. Cir.
1987).
Anticipation under this section is a factual determination. See In re
Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing In re
Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)).
Where the claimed and prior art products are seemingly identical, the
Patent and Trademark Office can require an applicant to prove that the prior
art products do not necessarily or inherently possess the characteristics of the
claimed product. See In re Best, 562 F.2d 1252, 1254-55 (CPPA 1977). The
fairness of so allocating the burden of proof is evinced by the inability of the
Patent and Trademark Office to obtain and compare such products. Id.
During examination, claim terms must be given “their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007). In this regard,
the claims are accorded the broadest reasonable interpretation consistent
with the Specification as they would have been understood by one of
ordinary skill in the art. See In re Graves, 69 F.3d 1147, 1152 (Fed. Cir.
1995).
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RELEVANT FINDINGS OF FACT AND ANALYSIS
Representative claim 5
All of the disclosed embodiments of a negative CTE particle in
accordance with Appellants’ invention include inner and outer shells (or bi-
layers), which outer shell (or outer layer of a bi-layer) is made of a material
that has a CTE that is lower than the CTE of a material from which the inner
shell (or inner layer of a bi-layer) is made (Spec. 4, 5, 7, 10, 12). The
Specification indicates Appellants’ negative CTE particles have a cavity
which is formed or enlarges as the particle is subject to expansion (Spec. 8).
Appellants’ particle expansion is disclosed as occurring during
cooling of the particle whereas a particle volume decrease (contraction)
occurs upon particle heating (Spec. 10). Appellants’ Specification further
provides that the disclosed particles can include layers made of “any suitable
materials, such as, for example, metals, glass, polymers, metal oxides,
carbides, nitrides, and alloys” (Spec. 8).
The Specification provides several exemplary methods for making
particles according to the claimed invention but does not specifically
identify any particular method step(s) as being critical to making a negative
CTE particle (Specification 3-11, 16).
The Specification states that “[the internal pressure of the hollow
spheres 5 is either high or low relative to atmospheric pressure depending on
the manufacturing process of the spheres” (Spec. 9; Figs. 3 and 4).
Appellants’ negative CTE particles are disclosed as being useful as fillers
but are not limited to any particular utility (see generally Specification ).
The Examiner has found that Wang describes “bilayer hollow
microsphere particles wherein the outer layer can be platinum or iron (lower
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CTE materials) and the inner layer can be aluminum (a higher CTE
material)” (Ans. 3; Wang, col. 3, l. 59 - col. 4, l. 2). Appellants do not
specifically dispute the finding of the Examiner that Wang’s platinum or
iron layer that lies outward of the inner aluminum layer has a higher CTE
than the aluminum (see the Appeal Brief in its entirety).1 In this regard, we
find that Wang specifically discloses a bi-layer hollow particle including an
aluminum spherical shell coated with a layer of platinum or iron (col. 4, l. 53
- col. 5, l. 15). A third layer promoter or activator coating is an optional
feature (id.)
The Examiner has found that Deckman “discloses forming bilayer
hollow microsphere particles wherein the outer layer is glass (a lower CTE
material) and the inner layer is metal, e.g., nickel, aluminum, cadmium, tin,
zinc (higher CTE materials)” ( Ans. 4; Deckman, col. 5, l. 67 - col. 6, l. 31).
Appellants do not specifically refute these findings of the Examiner (see
Appeal Brief in its entirety).
The Examiner has found that Torobin describes “forming bilayer
hollow microsphere particles wherein the outer layer can be metal glass
alloys (including lower CTE materials) and the inner layer is another metal,
e.g., zinc (a higher CTE material)” (Ans. 5; Torobin, col. 14, ll. 21-66).
Appellants do not specifically refute these findings of the Examiner (see
Appeal Brief in its entirety).
Given the substantial correspondence between the product particles of
each of the applied references and the particle required by representative
claim 5, the Examiner reasonably made an inferential factual determination

1 The Application File record reflects that Appellants did not file a Reply
Brief.
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with respect to each of the applied references to the effect that it would have
been expected, prima facie, that the particles described in each of the applied
references would possess a negative CTE characteristic/functionality as is
here recited in representative claim 5, given the structural correspondence
between hollow particles described by each applied reference and a particle
as recited in representative claim 5.
Accordingly, the Examiner determined that the particle required by
representative claim 5 was prima facie anticipated by each applied reference,
a finding with which we find reasonable based on the record before us.
The thrust of Appellants’ arguments appears to be based on the notion
that the representative claim 5 “negative CTE” functionality would not be
possessed by the particles disclosed by each of the applied references
because: (1) Wang is directed to forming particles of a controlled density for
a different purpose/functionality - catalysis; (2) Deckman is directed to glass
micro-balloon particles used for a different function – laser fusion and
retaining high pressure gases; and (3) Torobin discloses hollow metallic
micro-spheres for a different purpose - as fillers for high strength/light
weight structures.2 We are not persuaded of reversible error in the
Examiner’s anticipation rejection by these arguments respecting other uses/
functions/characteristics of the applied references’ particles.

2 Arguments with respect to an asserted lack of an explicit disclosure of the
claimed functionality in each of the applied references are not on point as to
the Examiner’s anticipation rejections, which rejections are predicated on
the corresponding structural features of the particles described by the applied
prior art giving rise to a reasonable inference of the prior art particles
possessing the claimed negative CTE functionality.
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At the outset we note that representative claim 5 requires a particle
with an inner and outer shell made of different materials with the outer shell
material having a lower coefficient of thermal expansion (CTE) than the
inner shell material, which shells enclose an inner cavity region. In
accordance with the Examiner’s factual findings and our factual findings
above, each of the applied references describe particles that share these
structural features.3 Moreover, representative claim 5 does not require any
particular degree of hollow cavity volume expansion with a particular
temperature increase or any particular degree of hollow cavity contraction
(decrease in volume) with a specified temperature decrease so long as the
particle has a cavity that possesses some of this negative CTE functionality
within any range of temperature change. Nor is representative claim 5
limited by any particular method of particle preparation.
Here, Appellants have not demonstrated that the applied references’
particles would not be characterized by the claimed negative CTE
functionality by pointing to other recited uses and characteristics thereof.
Appellants simply have not fairly established that the corresponding
structure of the particles of each of the applied references would not result in
particles possessing the claimed functional characteristics. Indeed,
Appellants acknowledge that the claimed particles have numerous
applications (see generally Specification and App. Br. 5).
As our reviewing court stated in In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997):

3 While Appellants argue that Wang employs a third layer (App. Br. 14), the
third layer is merely optional as we noted above.
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A patent applicant is free to recite features of an
apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971)(“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting
patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213, 169
USPQ at 228:
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.

In this case, we determine that the correspondence between the
structure of the particles described by each of the applied references and the
limited structure required by the particle specified by representative
appealed claim 5 furnishes sufficient reason to believe that the structurally
corresponding particles of each applied reference possess the broadly
claimed functional limitation(s) that, from Appellants’ perspective, would
not be so held by the particles described by each of the applied references.
In this regard, we further observe that the particles of each applied
reference will possess a negative CTE characteristic, a positive CTE
characteristic, a mixed CTE characteristic, or a constant volume
characteristic depending on the temperature change and other environmental
parameters the particles are subjected to.
Given the breath of representative claim 5, the correspondence of the
structure of the described particles of each applied reference to the structure
expressly required by claim 5, and the inability of the PTO to compare and
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test products, we agree with the Examiner that it is reasonable to shift the
burden to Appellants to establish that the applied prior art particles would
not be characterized by the claimed negative CTE functionality. Appellants
have not discharged this burden by pointing to other properties and
functionalities disclosed for the applied prior art particles and unclaimed or
required method of making steps.
In other words, the Examiner’s factual basis (the applied prior art and
claimed products share substantially the same construction) for shifting the
burden to Appellants of producing evidence to establish that the claimed
prior art particles would not possess a negative CTE characteristic or
functionality is not refuted by Appellants’ teachings and/or otherwise
“belied by” each of the applied references’ disclosed function and purpose
for the particles disclosed therein, as argued to be the case (App. Br. 13).
Claims 17-20
The Examiner has found that Torobin discloses that the microsphere
particles thereof can be included in an elastomer (Ans. 5; Torobin; col. 24, ll.
45-52; col. 25, l. 3-53; col. 30, ll. 26-49; Figs. 7-7B). However, all of
claims 17-20, as represented by independent claim 17, require that the
elastomer matrix/ negative CTE particle containing product is an electrical
contact.
Appellants challenge the Examiner’s anticipation rejection of claims
17-20 by Torobin on the basis that the Examiner has not established that
Torobin forms an electrical contact including negative CTE particles and an
elastomer matrix (App. Br. 18). Here we agree with Appellants in that the
Examiner has not fairly explained how the referred to disclosure of Torobin
describes a product that is structured to include an elastomer matrix and
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negative CTE particles in a context or relationship such that the overall
product is a structure that includes an elastomer matrix and the other
particles required by claim 17 arranged as an electrical contact; that is, an
article of manufacture that can electrically connect two electrical
components for conducting contact thereof. In this regard, the Examiner
asserts that the metal materials of Torobin meet the requirements of claim 17
for an electrical contact (Ans. 6). However, the Examiner has not fairly
explained how the inclusion of metal particles (microspheres) with a resin,
such as polyolefin, or a foam as generally described by Torobin in the
referred to sections thereof, describes with anticipatory specificity the claim
17 requirements for an overall product that is an electrical contact structure;
that is a structure capable of electrically connecting electrical components
and which contact comprises, among other things, at least one negative CTE
particle dispersed in an elastomer.

CONCLUSION
Appellants have not identified reversible error in the Examiner’s
anticipation rejections of representative claim 5 based on their arguments
that the Examiner has not presented a factual and reasoned analysis to
support a finding that each of the applied references describe particles which
would reasonably be expected to possess the claimed particle properties
based on the corresponding structure and coefficients of thermal expansion
of the particle layers described by each of the applied prior art references
with the layer requirements of representative claim 5.
However, Appellants have identified reversible error in the
Examiner’s anticipation rejection of claims 17-20 based on the Examiner’s
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failure to reasonably establish that Torobin discloses an electrical contact
structure formed from an elastomer matrix having dispersed negative CTE
particles as required by claim 17.
ORDER
The decision of the Examiner to reject claims 1, 2, 4, and 5 under 35
U.S.C. § 102(b) as being anticipated by Wang; to reject claims 1, 2, and 5
under 35 U.S.C. § 102(b) as being anticipated by Deckman; and to reject
claims 1, 2, 4, 5 under 35 U.S.C. § 102(b) as being anticipated by Torobin is
affirmed. The Examiner’s decision to reject claims 17-20 under 35 U.S.C. §
102(b) as being anticipated by Torobin is reversed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (2006).

AFFIRMED-IN-PART

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