Ex Parte Houston et al

Patent Trial and Appeal Board

Apr 12, 2017

13671833 (P.T.A.B. Apr. 12, 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.
13/671,833 11/08/2012 Daniel Quinn Houston 83251750 8117
28395 7590 04/14/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER TUROCY, DAVID P
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
04/14/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL QUINN HOUSTON, PATRICK JAMES BLANCHARD
and HAIBO ZHAO
Appeal 2016-005463
Application 13/671,8331
Technology Center 1700
Before CHUNG K. PAK, JEFFREY R. SNAY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A method of treating a substrate, comprising:
providing a hydrophobic substrate;
supplying a gaseous composition through atmosphere;
1 The Real Party in Interest is identified as Ford Global Technologies, LLC,
a wholly owned subsidiary of Ford Motor Company. App. Br. 1.
Appeal 2016-005463
Application 13/671,833
directing a plasma jet through the atmosphere and through the
gaseous composition toward the substrate to decompose the
gaseous composition to form ions; and
bonding the ions to the hydrophobic substrate.
Appellants (App. Br. 2) request review of the following rejections
from the Examiner’s Final Office Action:
I. Claims 1—7 are rejected under 35 U.S.C. 112, first paragraph, as
failing to comply with the written description requirement.
II. Claims 1, 2, 6 and 7 rejected under 35 U.S.C. § 102(b) as
anticipated by Nagakubo et al. (“Nagakubo”) (US 5,421,953, issued June 6,
1995).
III. Claims 1—3 and 5—7 rejected under 35 U.S.C. § 103(a) as
unpatentable over Couch et al. (“Couch”) (US 5,167,880, issued December
1, 1992) and Nagakubo.
IV. Claims 3—5 and 7 rejected under 35 U.S.C. § 103(a) as
unpatentable over Couch, Nagakubo and Shinagawa et al. (“Shinagawa”)
(US 5,832,177, issued November 3, 1998).
DISCUSSION
Rejection I: Rejection under f 112, first paragraph
(written description requirement)-
Claim 1 recites a method of treating a hydrophobic substrate.
2 Appellants argue all the claims together for this rejection. App. Br. 3—5.
Accordingly, we select independent claim 1 as representative of the subject
matter before us on appeal for this rejection. Claims 2—7 stand or fall with
claim 1.
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Application 13/671,833
The Examiner found that the term “hydrophobic substrate” recited in
claim 1 is not supported by the Specification as originally filed and that
Appellants have not pointed to any specific or inherent disclosure that
supports the disputed term. Final Act. 5; Ans. 6. The Examiner also found
that Appellants’ reliance on the embodiment comprising carbon fiber is
insufficient to support the broad term “hydrophobic substrate” in the claim.
Ans. 7; Spec. 119.
Appellants do not dispute the Examiner’s finding that the
Specification as originally filed does not contain any reference to
“hydrophobic substrate.” See App. Br. 3^4. Instead, in support for the
disputed term, Appellants rely on extrinsic evidence, in the form of the
references to Sharma,3 Fu,4 and Seo,5 to show that Appellants’ disclosed
carbon fiber substrate is well known to be inherently hydrophobic. App. Br.
3-A\ Spec. 119.
We are unpersuaded by Appellants’ arguments. As our reviewing
court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983):
3 Mohit Sharma, Shanglin Gao, Edith Mader, Himani Sharma, Feong Yew
Wei, Jayashree Bijwe, Carbon fiber surfaces and composite interphases,
Composites Science and Technology 102, pp. 35—50 (2014).
4 Xuli Fu, Weiming Fu, and D. D. F. Chung, Ozone treatment of carbon
fiber for reinforcement cement, Carbon, Volume 36, Issue 9, pp. 1337—1345
(1998).-
5 Hyun Ook Seo, Kwang-Dae Kim, Myung-Geun Jeong, Young Dok Kim,
Kang Ho Choi, Eun Mi Hong, Kyu Hwan Fee, and Dong Chan Fim,
Superhydrophobic Carbon Fiber Surfaces Prepared by Growth of Carbon
Nanostructures and Polydimethylsiloxane Coating, :Macromolecular
Research, Vol. 20, No. 2, pp 216—219 (2012).
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Application 13/671,833
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language....
[Citations omitted.]
Our reviewing court has also explained that, when relying on extrinsic
evidence “[t]o establish inherency, the extrinsic evidence must make clear
that the missing descriptive matter is necessarily present in the thing
described in the reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999; internal quotation and citation omitted).
While the extrinsic evidence relied upon by Appellants shows carbon
fiber, one of the substrates disclosed by Appellants, happens to have a
hydrophobic surface, the disclosure of carbon fiber does not provide written
descriptive support for any and all hydrophobic substrates, including those
which are materially different from carbon fiber substrates. Ans. 6—7. Thus,
we concur with the Examiner that one skilled in the art would be unable to
ascertain from the application’s disclosure, as originally filed, that the
inventors were in possession of the claimed invention.
Accordingly, we determine that Appellants have not identified
reversible error in the Examiner’s finding that the subject matter presently
recited in representative claim 1 does not have written descriptive support in
the application’s disclosure, as originally filed, within the meaning of the
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Application 13/671,833
first paragraph of 35 U.S.C. § 112. We therefore sustain the Examiner’s
rejection of claims 1—7 for failing to comply with the written description
requirement.
Rejection II: Rejection under 35 U.S.C. § 102(b)6
We REVERSE.
Claim 1 is directed to a method of treating a hydrophobic substrate by
bonding ions to the hydrophobic surface. The ions are generated from a
gaseous composition decomposed by a plasma directed at the gaseous
composition through the atmosphere.
The Examiner found Nagakubo describes the claimed process carried
out in a vacuum atmosphere. Final Act. 6; Ans. 8; Nagakubo Abstract, col.
1,11. 10—13, col. 2,11. 19—22, col. 3,1. 34—col. 4,1. 13. The Examiner
determined that the prior art vacuum atmosphere can be considered as the
claimed atmosphere. Ans. 8.
Appellants argue the Specification discloses the atmosphere as having
normally occurring gases. Reply Br. 2; Spec. 120. Thus, according to
Appellants, Nagakubo does not anticipate the claimed invention because
Nagakubo directs plasma in a vacuum chamber, instead of through
atmosphere as claimed. App. Br. 5.
6 We limit our discussion to independent claim 1.
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Application 13/671,833
We begin by construing the term “atmosphere.” During examination,
claim terms are given their broadest reasonable construction consistent with
the Specification. In general, “the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant's specification.” In re Morris, 127 F.3d 1048, 1054—55 (Fed. Cir.
1997).
In this case, the ordinary meaning of the term “atmosphere” is “the
gaseous mass surrounding any star or planet.”7 This meaning is consistent
with Appellants’ discussion of the atmosphere having normally occurring
gases in the Specification. Reply Br. 2; Spec. 120. Thus, we agree with
Appellants that the interpretation of the term “atmosphere” as encompassing
vacuum atmosphere is unreasonable and inconsistent with the Specification.
The Examiner acknowledges that Nagakubo does not teach an
atmosphere as defined by the ordinary meaning of the word. Ans. 8.
Therefore, we agree that Nagakubo is not anticipatory of the claimed
invention as argued by Appellants. Reply Br. 2.
7 Webster’s New World College Dictionary, 4th Edition. Copyright © 2010
by Houghton Mifflin Harcourt.
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Application 13/671,833
Accordingly, we reverse the Examiner’s anticipatory rejection of
claims 1, 2, 6, and 7 for the reasons presented by Appellants and given
above.
Rejections III and IV: Rejections under 35 U.S.C. § 103(a)
The Examiner’s rejections under 35 U.S.C. § 103(a) based on the
common combination of Couch and Nagakubo (Rejections III and IV) are
premised on the secondary reference to Nagakubo teaching a plasma process
through atmosphere where atmosphere encompasses a vacuum atmosphere.
Final Act. 7—9. As discussed above, Nagakubo does not teach the recited
atmosphere as defined by the ordinary meaning of the word which is
consistent with the written description of the Specification.
Accordingly, we also reverse the Examiner’s prior art rejections of
claims 1—7 under 25 U.S.C. § 103 (a) for the reasons presented by
Appellants and given above.
ORDER
The Examiner’s rejection of claims 1—7 under 35 U.S.C. § 112, first
paragraph is affirmed.
The Examiner’s prior art rejection of claims 1, 2, 6, and 7 under 35
U.S.C. § 102(b) is reversed.
The Examiner’s prior art rejections of claims 1—7 under 35 U.S.C.
§ 103(a) are reversed.
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Appeal 2016-005463
Application 13/671,833
TIME PERIOD
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
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