Ex Parte Jiang et al

Patent Trial and Appeal Board

Feb 2, 2017

13113264 (P.T.A.B. Feb. 2, 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.
13/113,264 05/23/2011 Nan Jiang 21545-239001 9304
75589 7590 02/06/2017
Matheson Keys Daffer & Kordzik PLLC
7004 Bee Cave Rd.
Bldg. 1, Suite 110
Austin, TX 78746
EXAMINER
LUK, VANESSA TIB AY
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
02/06/2017 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):
kkordzik@ mathesonkeys.com
claney @ mathesonkeys .com
kdaffer @ mathesonkeys. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAN JIANG, SAMUEL KIM, and ZVI YANIV
Appeal 2016-000429
Application 13/113,264
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3, 5—14, and 16—27. We have jurisdiction under 35 U.S.C. § 6(b).
The subject matter of this appeal relates to designing thermal sinks to
transfer heat from a hot spot and diffuse it to a heat sink. Spec. 1. More
particularly, the subject matter relates to pressure casting manufacturing
methods in which “graphitic needle cokes are utilized, though other graphitic
particles may be substituted, including, but not limited to, carbon
1 This decision makes reference to the Specification filed May 23, 2011
(“Spec.”), the Final Office Action mailed Jan. 5, 2015 (“Final Act.”), the
Appeal Brief filed May 14, 2015 (“App. Br.”), the Examiner’s Answer
mailed Sept. 10, 2015 (“Ans.”), and the Reply Brief filed Oct. 9, 2015
(“Reply Br.”).
Appeal 2016-000429
Application 13/113,264
nanotubes.” Id. at 4. Claims 1,7, 17, and 21 are illustrative (disputed
elements italicized):
1. A method for making a carbon-aluminum composite
comprising:
preparing a mixture of graphitic particles and aluminum
by mixing the graphitic particles with aluminum particles; and
pressing the mixture of graphitic particles and aluminum
in a heated pressure mold, wherein the graphitic particles
comprise graphitic needle cokes.
7. A method for making a carbon-aluminum composite
comprising:
preparing a mixture of graphitic particles and aluminum
by coating the graphitic particles with aluminum; and
pressing the mixture of graphitic particles and aluminum
in a heated pressure mold, wherein the graphitic particles
comprise graphitic needle cokes.
17. A method for making a carbon-aluminum composite
comprising:
pressing a mixture of graphitic particles and aluminum in
a heated pressure mold; and
inserting a ceramic sheet into the mixture before pressing
in the heated pressure mold.
21. The method as recited in claim 1, wherein at least some
of the aluminum particles have an anisotropic shape, and
wherein at least some of the graphitic needle coke particles have
an anisotropic shape.
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The Examiner maintains and Appellants2 appeal the following
rejections:
1. Claim 21 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the written description requirement;
2. Claims 1, 3, 5-7, 10-14, 16, 21, and 25-273 under 35 U.S.C.
§ 103(a) over Adams ’9954 in view of Takeda;5
3. Claim 8 under 35 U.S.C. § 103(a) over Adams ’995 in view of
Takeda and Rockenberger;6
4. Claim 9 under 35 U.S.C. § 103(a) over Adams ’995 in view of
Takeda and Withers;7
5. Claims 17—19 under 35 U.S.C. § 103(a) over Adams ’995 in view
of Adams ’851;8 and
6. Claim 20 under 35 U.S.C. § 103(a) over Adams ’995 in view of
Adams ’851 and Takeda.
App. Br. 8; Ans. 2—7.
2 Appellants identify the real party in interest as Applied Nanotech Holdings,
Inc. App. Br. 1.
3 Although Appellants and the Examiner omit claim 27 from the list of
claims subject to this rejection (Final. Act. 3; App. Br. 8), both Appellants
and the Examiner address claim 27 as being subject to the rejection (Final
Act. 4; App. Br. 16). Therefore, the rejection of claim 27 is included in this
appeal.
4 Adams et al., US 2010/0189995 A1 (pub. July 29, 2010) (“Adams ’995”).
5 Takeda et al., US 2010/0009193 Al (pub. Jan. 14, 2010) (“Takeda”).
6 Rockenberger et al., US 2010/0022078 Al (pub. Jan. 28, 2010)
(“Rockenberger”).
7 Withers et al., US 6,723,279 B1 (iss. Apr. 20, 2004) (“Withers”).
8 Adams et al., US 6,895,851 B1 (iss. May 24, 2005) (“Adams ’851”).
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Application 13/113,264
ANALYSIS
The dispositive issues on appeal are:
1. Did the Examiner reversibly err in finding that the term
“anisotropic shape” is new matter to the application?
2. Did the Examiner reversibly err in finding that additional
admixtures to the aluminum and carbon nanotubes (CNT)
disclosed in Adams ’995 encompasses graphite suitable for the
production of metal-carbon composites and that Takeda informs
one of ordinary skill in the art that graphitic needle coke is a source
or type of graphite suitable for the production of aluminum-based
composite materials?
3. Did the Examiner reversibly err in finding that the milled particles
of Adams ’995 and Takeda display anisotropic shape or
morphology?
4. Did the Examiner reversibly err in finding that graphite is capable
of being coated with molten metal by (1) dipping and (2) sputter
coating methods in view of Rockenberger and Withers,
respectively, in combination with Adams ’995 and Takeda?
5. Did the Examiner reversibly err in finding that a skilled artisan
would have increased the overall strength of the composite of
Adams ’995 by adding a ceramic sheet in view of the disclosure in
Adams ’851 of ceramic sheets to reinforce a metal composite?
After review of the arguments and evidence presented by both
Appellants and the Examiner, we reverse the written description rejection
under Section 112, first paragraph, and affirm the obviousness rejections
under Section 103(a). A preponderance of the evidence, as referenced in the
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Final Office Action and the Answer, supports the Examiner’s findings and
conclusions regarding obviousness, and we provide additional discussion for
emphasis below.
Rejection 1: Written Description
It is the Examiner’s position that claim 21, which recites “anisotropic
shape,” is not supported by the disclosure in the Specification of
“anisotropic behavior” for the reasons stated on page 2 of the Answer and
pages 2—3 of the Final Action.
In the Appeal Brief, Appellants contend that the reference to
anisotropic behavior on page 4 of the Specification describes the mechanical
shaking of the mixture and refers to the shape of aluminum particles and
graphitic needle cokes. App. Br. 9 (also citing Figure 8 for images of needle
cokes having an anisotropic shape). Appellants further argue that uniform
mixing of the materials “exploits] the fact that many of the graphitic needle
coke particles have an anisotropic shape” and that “the language within
Claim 21 is clear and understandable” to a skilled artisan from the
Specification as well as “what is well-known about the structures of
graphitic needle cokes.” Id.
The Examiner responds that a skilled artisan “would associate the
term ‘anisotropic’ with behavior” as demonstrated by the disclosure of
anisotropy in paragraphs 51 and 52 of Adams ’995. Ans. 8.
In the Reply Brief, Appellants contend that the discussion of
anisotropy in paragraphs 51 and 52 of Adams ’995 “is referring to the
structure and mechanical and physical properties[, which] do not have a
‘behavior.’” Reply Br. 2—3. Appellants also contend that Adams ’995 “is
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referring to how such structures and mechanical and physical properties are
physically aligned in the semi-finished products and molded bodies.” Id. at
3. Appellants further contend that the disclosure on page 5 of the
Specification of “the anisotropic particles of aluminum and graphitic needle
cokes” being mixed during the shaking step provides further written
description support for claim 21. Id. at 2.
We agree with Appellants that the context in which the Specification
uses the term anisotropic is directed to a physical characteristic of the
particles that affects mixing, including particle size and shape. Page 4 of the
Specification refers to the anisotropic property of the graphitic needle cokes
in particular impacting the performance of “mechanical shaking of the C/Al
mixture.” Spec. 4. Page 5 describes “particles of aluminum and graphitic
needle cokes” being mixed during the shaking step as “anisotropic” and, the
effect being “uniformity and directionality of the mixture.” Id. at 5. The
Specification further discloses that “[a] more uniform mixture can be
obtained by selecting a mixture of different-sized graphitic needle cokes to
form a dense topology compact” and refers to Figure 8 as showing “different
sizes and shape of graphitic needle cokes.” Id. at 4. Such physical
characteristics of the particles being described as anisotropic is consistent
with the use of the term in Adams ’995, which describes “anisotropy” as
being present “in the structure and mechanical and physical properties” of
materials. Adams ’995 151; see id. 1 52 (referring to “controlled anisotropy
of the material properties such as the tensile strength.”).
In sum, the preponderance of the evidence in this record demonstrates
that “anisotropic shape” recited in claim 21 has written description support
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in pages 4 and 5 and Figure 8 of the Specification. Therefore, we reverse the
rejection of claim 21 under 35 U.S.C. § 112, first paragraph.
Rejection 2: Adams ’995 and Takeda
It is the Examiner’s position that Adams ’995 and Takeda suggest the
subject matter of claims 1, 3, 5—7, 10—14, 16, 21, 25—27 for the reasons
stated on pages 2-4 of the Answer and pages 3—5 of the Final Action.
In the Appeal Brief, Appellants do not provide separate substantive
arguments for claims 1,7, and 12, but rely upon the same arguments
presented with respect to claim 1. App. Br. 14. Appellants rely on the same
arguments presented with respect to claim 11 to show the patentability of
claim 14. Id. Appellants do not argue claims 5, 6, and 26. Id. at 9-16.
Therefore, we select claim 1 as representative of claims 1, 5—7, and 12, and
claim 11 as representative of claims 11 and 14. Claims 5—7 and 12 stand or
fall with claim 1, claim 14 stands or falls with claim 11, and claim 26 stands
or falls with claim 25. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding claim 1, Appellants contend that because “Takeda does not
suggest mixing graphitic needle coke particles with aluminum particles and
then pressure molding that mixture[,]” there is no teaching or suggestion in
either Adams ’995 or Takeda of “the claimed method of mixing graphitic
needle coke particles with aluminum particles for a subsequent pressure
molding.” App. Br. 10. Appellants further argue that “there is no
suggestion in Takeda to substitute graphitic needle coke particles for the
CNTs in Adams ’995.” Id. at 11. Based on these asserted deficiencies of
Takeda, Appellants argue that the combination of Takeda and Adams ’995
does not disclose the method of claim 1 and “[t]he only suggestion to veer
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from the prior art process of impregnation of molten aluminum into a
graphite material is provided by Appellants’ disclosure and claims.” Id.
Appellants contend the language in paragraphs 46 and 59 of Adams ’995
“merely suggests to one of ordinary skill in the art to utilize CNTs.” Id.
According to Appellants, “Adams ’995 is only enabling for utilizing CNTs”
{id. at 12), the combination of references “would not suggest that a deviation
from this prior art process is possible by substituting the graphitic needle
coke particles of Takeda for the CNTs of Adams ’995 without having to
resort to undue experimentation” {id. at 11), and Appellants’ distinctions
over the references separately shows “how a reference teaches away from
the claimed invention” {id. at 12). Appellants also assert that Takeda does
not disclose that graphite imparts high thermal conductivity to articles as the
Examiner finds, but, rather that “the graphite material as finally produced in
Takeda would have a high thermal conductivity.” Id. at 13. These
arguments are addressed following the summary of Appellants’ arguments.
Regarding claims 3 and 25, Appellants recite the claims and state,
without elaboration, that the Examiner has not addressed the recitation.
App. Br. 13, 15. This kind of presentation is insufficient to establish
Examiner error. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding
that merely asserting that applied prior art does not teach a recited limitation
is not substantive argument for separate patentability); see also Ans. 3
(addressing claim 3 and providing citations to Adams ’995), 12 (addressing
the “consisting of’ limitation in claim 25 and explaining that “there are no
other steps in Adams ’995 that are required to carry out the basic method of
pressure molding”).
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Regarding claim 10, Appellants argue that the references teach away
from pressure molding graphitic and aluminum processes by leading one of
ordinary skill to utilize impregnation of molten aluminum into a graphitic
material. App. Br. 14. This argument substantively overlaps with the
argument provided for claim 1 and is also addressed below.
Regarding claim 11, which recites “a temperature of the heated
pressure mold is 660°C or greater,” Appellants contend that there would be
no expectation of success from the combination of references because “the
combination of the references teaches away from their combination since the
temperature disclosed for performing a pressure molding process in Adams
’995 is disparate and contradictory to the much higher temperature of
1000°C taught in Takeda.” Id. Appellants also assert that undue
experimentation would be required to determine which temperature range
would be successful and cannot be assumed by the Examiner. Id. These
arguments are also addressed below.
Regarding claim 16, the claim recites “adding silicon powders to the
mixture before pressing in the heated pressure mold.” App. Br. 21 (Claims
App’x). Appellants argue that Adams ’995 does not teach this recitation, but
Appellants fail to argue that the recitation is not taught by the combination
of Adams ’995 and Takeda as asserted by the Examiner. Id. at 15. As such,
this argument fails to establish error. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding claim 21, which requires that at least some of the
aluminum particles and the graphitic needle coke particles have an
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anisotropic shape, Appellants argue that Adams ’995’s disclosure that the
composites may be anisotropic “does not specifically address the claimed
invention” because “finished products and bodies having an anisotropy
structure is not the same as the recited aluminum and graphitic needle coke
particles each having anisotropic shapes.” App. Br. 15. This argument is
addressed below.
Regarding claim 27, Appellants argue that the references do not lead
to substitution of graphitic needle cokes for the CNTs disclosed by Adams
’995. Id. at 16. This argument substantively overlaps with the argument
provided for claim 1 and is also addressed below.
The Examiner responds to Appellants’ arguments above by finding
that “Takeda’s teaching of impregnation methods does not teach away from
the pressure molding method disclosed by Adams ’995” and Adams ’995
itself acknowledges that impregnation (or infiltration) is “another way of
incorporating aluminum into graphite-based compacts containing graphite
powders.” Ans. 9. The Examiner finds that paragraph 42 of Adams ’995
“teaches that the incorporation of other carbon-based powders into the
aluminum-CNT mixture is expected to be carried out successfully” and that
Takeda shows graphitic needle coke powder can be successfully pressure
molded to create a composite material with a metal-containing powder. Id.
at 10 (citing Takeda Tflf 14—16, 52—55). The Examiner cites paragraph 26 of
Takeda for disclosing that thermal conductivity originates from the graphite
component of the composite. Id. Regarding the claimed temperature, the
Examiner also finds that Adams ’995 teaches that the melting temperature of
metal is referred to, thus, “it is implicit that the process is conducted at a
temperature sufficient to melt the metal, i.e., 750°C or higher, and this
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would not conflict with Takeda’s temperature of 1000°C.” Id. at 11.
Regarding the claimed anisotropic shape, the Examiner finds that both
Adams ’995’s aluminum and Takeda’s graphitic needle coke powder are
milled and therefore “not unlike those shown in Fig. 8.” Id. at 12.
In the Reply Brief, Appellants further argue that “Adams ’995 merely
suggests graphite, but does not specifically identity graphitic needle coke.”
Reply Br. 3. Regarding Takeda’s disclosure of thermal conductivity being
contributed to the graphite material, Appellants’ assert that Takeda teaches
“a conventional graphite material heated to a very high temperature allows
the graphite material to exhibit properties such as thermal conductivity
peculiar to the graphite material.” Id. at 4. Regarding the temperature range
disclosed by Adams ’995, Appellants contend the temperature is “less than
750°C, because the process must be able to melt the metal and not the
powdery matrix material (i.e., the CNT-containing material).” Id.
Regarding anisotropic shape, Appellants contend that Adams ’995 merely
discloses the use of the metal in a grainy manner or in granular or powder
form” which Appellants argue “is not the same as disclosing aluminum
particles with an anisotropic shape.” Id. at 5.
We are not persuaded that the Examiner erred in finding that Adams
’995 discloses (1) a composite containing aluminum and carbon nanotubes
(graphitic particles), (2) that additional admixtures such as graphite may be
contained therein, and (3) that the composite is formed by applying pressure
in a heated casting mold. We also are not persuaded that the Examiner erred
in finding that needle coke powder is a starting material used in the
manufacture of metal-graphite composites, as evidenced by Takeda, and that
it would have been obvious to one of ordinary skill in the art to combine
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needle coke powder, as a form of graphite, in admixture with the composite
materials of Adams ’995 in view of the explicit teaching in Adams ’995 that
such material may contain functional admixtures of graphite. In addition,
we are not persuaded that the Examiner erred in finding that Adams ’995
discloses a temperature range that overlaps the range required by claim 11
for the temperature of the heated pressure mold and that the milled
aluminum particles of Adams ’995 encompass the claim 21 requirement that
“at least some of the aluminum particles have an anisotropic shape.” A
preponderance of the evidence (as cited by the Examiner) supports these
findings.
Appellants’ arguments are not persuasive because there is no
ipsissimis verbis test for determining whether a reference discloses a claim
element, i.e., identity of terminology is not required. In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990). Appellants may be correct that Adams ’995 does
not specify graphitic needle coke particles by that name as an example of
functional admixtures in paragraph 42, however, Appellants do not direct us
to any evidence that Adams ’995’s disclosure of graphite for the functional
admixture would not encompass graphitic needle coke particles.
Nor do Appellants direct us to any evidence that one of ordinary skill
in the art would understand Adams ’995’s disclosure of graphite for its
admixture to be limited in any manner that would exclude needle coke.
Instead, Appellants argue that “Adams ’995 does not suggest needle coke
powders [specifically] can be substituted for its CNTs.” App. Br. 13. A
preponderance of the evidence, however, supports the Examiner’s finding
“that graphitic needle coke is a type suitable for the production of
aluminum-based composite materials” (Ans. 9), and Appellants do not
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persuasively dispute this point. Thus, the evidence supports that a person of
skill in the art would understand Adams ’995’s disclosure of graphite as also
disclosing use of needle coke particles.
Similarly, Appellants do not dispute that both Adams ’995 and
Takeda disclose that their carbon component imparts thermal conductivity
and that the addition of graphite needle coke to Adams ’995’s mixture of
aluminum and carbon nanotubes improves thermal conductivity. Instead,
Appellants assert that “Takeda are not merely disclosing that graphite
imparts high thermal conductivity in articles.” App. Br. 13. In a
determination of obviousness, a reference may be relied upon for all that it
would have reasonably suggested to one having ordinary skill in the art.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That
the [prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.”); In re Mills, 470 F.2d 649,
651 (CCPA 1972) (citation omitted) (“a reference is not limited to the
disclosure of specific working examples.”). Appellants’ arguments limiting
the disclosures in both Adams ’995 and Takeda to particular embodiments
rather than addressing the broader disclosures as would have been
understood by one of ordinary skill in the art are not insightful and,
consequently, are unpersuasive.
Appellants’ argument that Adams ’995 and Takeda teach away from
each other because they disclose different methods and temperatures for
making carbon and metal composites is not persuasive. A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
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taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As
the Examiner finds, and Appellants do not dispute, Takeda’s impregnation
method is a method acknowledged in Adams ’995. Ans. 9. Because the
methods of Adams ’995 and Takeda are alternative methods for producing
carbon-metal composites, and specifically carbon-aluminum composites as
described in Adams ’995, this suggests the admixture examples taught by
Adams ’995 encompasses known graphite suitable for the production of
metal-carbon composites. See id. Appellants do not direct us to any
evidence that Takeda teaches away from graphitic needle coke being a
source of graphite such that it can be used as a functional admixture as
suggested by Adams ’995. Moreover, in addition to Adams ’995 explicitly
describing temperature in terms of the melting temperature of the metal as
guidance to one of ordinary skill in the art, the temperature ranges disclosed
in both Adams ’995 and Takeda overlap the temperature range recited in
claim 11. Therefore, we are not persuaded by Appellants’ argument that the
temperature used in Takeda’s process teaches away from the temperature
used in the Adams ’995 process or the temperature required by claim 11.
Regarding the requirement in claim 21 for both the aluminum
particles and the graphitic needle coke particles to have at least some of the
particles have an anisotropic shape, Appellants do not dispute that many
graphitic needle coke particles have an anisotropic shape. App. Br. 9, 15.
Regarding the disclosure of milled aluminum particles in Adams ’995,
Appellants’ contention that “is not the same as disclosing aluminum
particles with an anisotropic shape” (Reply Br. 5) does not rebut the
Examiner’s finding that “milling produces rough, granular particles not
unlike those shown in Fig. 8 [of Appellants’ Specification]” (Ans. 12). As
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discussed above, determining whether a reference discloses a claim element
is not an ipsissimis verbis test. In re Bond, 910 F.2d at 832. Similarly,
Appellants’ argument that Figure 4 of Adams ’995 discloses the final
product rather than the starting materials (Reply Br. 5) also is insufficient to
rebut the Examiner’s findings, because (1) claim 21 does not have a
temporal limitation, (2) even if claim 21 requires the presence of an
anisotropic shape in the starting materials, Appellants do not direct us to any
evidence that such anisotropic shape results from applying pressure in a
heated casting mold rather than from milling, (3) Appellants do not dispute
the Examiner’s finding that the recited “anisotropic shape” is disclosed in
Figure 4 of Adams ’995, (4) Appellants do not dispute the Examiner’s
finding that the recited “anisotropic shape” is disclosed in Figures 5—9 as
well of Adams ’995 (Ans. 12), and (5) Figures 5—9 of Adams ’995 “show
the starting products and finished material components seen through a
microscope” (Adams ’995 1 67).
In sum, we are not persuaded that the Examiner erred in rejecting
claims 1, 3, 5—7, 10-14, 16, 21, and 25—27 under 35 U.S.C. § 103(a) over
Adams ’995 and Takeda.
Rejection 3: Adams ’995, Takeda, and Rockenberger
It is the Examiner’s position that Adams ’995, Takeda, and
Rockenberger suggest the subject matter of claim 8 for the reasons stated on
pages 4—5 of the Answer and pages 5—6 of the Final Action.
In the Appeal Brief, Appellants argue that “Rockenberger does not in
any way teach or suggest dipping a substrate in aluminum ink.” App. Br.
16. Appellants also argue that the Examiner’s reason for combining
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Rockenberger with the method of Adams ’995 as modified by Takeda is not
supported by objective evidence and one of ordinary skill in the art would
not have an expectation of success because “a process of dipping micron­
sized graphitic particles into an aluminum ink is not nearly as easy as using a
printing process to print an aluminum ink film onto a relatively large
substrate.” Id. at 16—17.
The Examiner responds that “graphitic needle cokes would be coated
with aluminum when aluminum ink is deposited on them” and “[t]he
formation of coating implies that the graphite has been dipped into molten
aluminum.” Ans. 12. The Examiner finds that “the pressing temperatures in
Adams ‘’995 is sufficient to keep the aluminum metal molten (paragraph
[0054]); therefore, the presence of graphite in molten aluminum metal is
graphite dipped in metal.” Id. at 13. Regarding expectation of success, the
Examiner finds that Rockenberger evidences dip coating and that “small
particles can be dispersed in aluminum ink solution.” Id. at 12—13.
In the Reply Brief, Appellants further argue that Adams ’995
discloses “infiltrating molten metal into the CNT-containing material” and
does not suggest “dipping the CNTs in molten aluminum and then thermal
curing the aluminum-coated CNTs before then pressing the mixture into a
heated pressure mold.” Reply Br. 7. Appellants assert that the Examiner
erred by “parsing the various limitations and not considering the claimed
invention as a whole.” Id.
We are not persuaded that the Examiner erred in finding that Adams
’995’s disclosure of carbon particles being immersed in molten aluminum
teaches or suggests “dipping the graphitic needle cokes into an aluminum
ink” as recited by claim 8. Under a broadest reasonable interpretation,
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dipping into an aluminum ink includes infiltrating or immersing in an
aluminum ink. Appellants do not provide any basis for a more narrow
interpretation, and we do not discern a basis for a more narrow interpretation
from the Specification. See Spec. 5 (referring to “dipping the graphitic
needle cokes into aluminum inks” without further elaborating on what is
meant by “dipping”).
Appellants’ argument that the Examiner erred by “parsing” the claim
limitations is not persuasive because, although the claims are interpreted in
light of the specification, limitations from the specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Appellants’ argument that the Examiner’s rejection lacks a reasonable
expectation of success is not persuasive because Appellants do not dispute
that Rockenberger evidences that aluminum can be manufactured into an ink
that is applied to a substrate or suspending nanoparticles. Ans. 13.
Moreover, both the Specification and Rockenberger evidence that “inking”
and “dipping” are known methods of coating that do not require a more
detailed explanation to one of ordinary skill in the art. Spec. 5 (“Such
coating processes may be, but are not limited to, inking, plating, and
sputtering methods. For example, the aluminum coatings may be applied by
. . . (1) dipping . . .”); Rockenberger 119 (“In the present application, the
term ‘deposit’ ... is intended to encompass all forms of deposition,
including . . . dip coating . . .”); see In re O'Farrell, 853 F.2d 894, 903-04
(Fed. Cir. 1988) (“Obviousness does not require absolute predictability of
success. ... [A]ll that is required is a reasonable expectation of success.”).
Accordingly, we are not persuaded that the Examiner erred in finding claim
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8 unpatentable under 35 U.S.C. § 103(a) over Adams ’995, Takeda, and
Rockenberger.
Rejection 4: Adams ’995, Takeda, and Withers
It is the Examiner’s position that Adams ’995, Takeda, and Withers
suggest the subject matter of claim 9 for the reasons stated on page 5 of the
Answer and page 6 of the Final Action.
In the Appeal Brief, Appellants argue that the Examiner erred in not
addressing “all of the limitations recited within Claim 9” because “[tjhere
are no graphitic fibers recited within Claim 9. Instead, graphitic needle coke
particles are coated with such a sputtering process.” App. Br. 17.
Appellants also argue that Withers’ disclosure of coating graphite fibers
using a sputter coater does not “correspond to micron-sized graphitic
particles.” Id. at 17—18. According to Appellants, the Examiner’s
combination of Withers with Adams ’995 and Takeda “would require undue
experimentation” in order to combine the sputtering process disclosed in
Withers with the graphitic needle coke particles recited in claim 9. Id. at 18.
In response, the Examiner finds that “Withers does not limit the size
of the particles being coated” and that “graphite fibers, such as CNTs, may
have dimensions as high as up to 0.5 mm (up to 500 pm) (Adams ’995,
paragraphs [0040], [0041]). . . not unlike the graphitic needle coke particles
of Takeda that are 100 pm in size (paragraph [0053]).” Ans. 14.
Appellants do not dispute the Examiner’s finding that the size of
Withers’ graphite fibers is not unlike the size of Takeda’s graphitic needle
coke particles in the Reply brief.
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We are not persuaded that the Examiner erred in finding that “it would
have been obvious to one of ordinary skill in the art to have sputter coated
the needle cokes of Adams and Takeda in order to achieve a desired
aluminum thickness on the fibers” as taught by Withers. Final Act. 6 (citing
Withers 14:27—31, 25:55—56). The Examiner’s reason for combining
Withers with Adams ’995 and Takeda to achieve a desired aluminum
thickness is supported by the record. The Examiner finds that Takeda
teaches the graphitic needle particles recited in the claim, therefore, the
Examiner has shown that all of the limitations of claim 9 are disclosed in the
cited prior art references. Finally, Appellants do not dispute that the size of
graphite fibers such as CNTs is not unlike Takeda’s graphitic needle coke
particles.
In sum, Appellants have failed to identity reversible error in the
Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) over the
combination of Adams ’995, Takeda, and Withers.
Rejection 5: Adams ’995 and Adams ’851
It is the Examiner’s position that Adams ’995 and Adams ’851
suggest the subject matter of claims 17—19 and 22—24 for the reasons stated
on pages 5—7 of the Answer and pages 6—7 of the Final Action.
In the Appeal Brief, Appellants separately argue the patentability of
claims 17 and 18 while grouping them together with claims 19 and 22—24.
App. Br. 18—19. Therefore, we select claim 17 as representative and claims
19 and 22—24 will stand or fall together with claim 17. See 37 C.F.R. §
41.37(c)(l)(iv).
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Regarding claim 17, Appellants contend that the Examiner’s rejection
is in error for the same reasons argued with respect to claim 1. App. Br. 18.
Appellants also argue that
the combination of the references does not teach adding a
ceramic plate to a mixture of graphitic and aluminum particles.
Instead, the combination of the references clearly teaches to one
of ordinary skill in the art to add molten aluminum to a set of
layered materials to infiltrate the molten aluminum into these
layers and the materials they comprise.
Id.
Regarding claim 18, Appellants contend that “[t]he Examiner has not
addressed how the combination of the references would perform such a
cutting or slicing process to produce a carbon-aluminum composite with a
ceramic surface.” Id. at 18—19.
The Examiner responds that “Adams ’851 ’s teaching of infiltration
methods does not teach away from the pressure molding method disclosed
by Adams ’995” particularly because “Adams ’995 acknowledges that
impregnation (also referred to as infiltration) is merely another way of
incorporating aluminum into graphite-based compacts containing graphite
powders (paragraphs [0050], [0053]).” Ans. 14. The Examiner also finds
that “Adams ’851 shows that the hard layer 25 is exposed at a top surface
after being pressed in a mold (Fig. 1)” and “[c]utting would allow a person
of ordinary skill in the art to obtain a desired shape and/or size required to
meet a predetermined specification.” Id.
In the Reply Brief, Appellants further argue that the combination of
Adams ’995 and Adams ‘851 “does not disclose the claimed process, since
such a combination would merely suggest to one of ordinary skill in the art
to perform a process that is in reverse order relative to the claimed process.”
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Reply Br. 7. Appellants further argue that the combination of references
“would result in an aluminum infiltrated graphite-based compact with no
way of then inserting the ceramic structures of Adams ’851.” Id. at 8.
Appellants argue in addition that the Examiner’s citation of Figure 1 is
directed to the initial set up. Id.
As an initial matter, we are not persuaded that the Examiner erred in
rejecting claims 17 and 18 for the same reasons discussed above in
connection with claim 1. We also are not persuaded that the Examiner erred
in finding that “it would have been obvious to one of ordinary skill in the art
to have added ceramic sheets of Adams ’851 to the molded mixture of
Adams ’995 because the plates would further reinforce the molded product,
thereby increasing its overall strength.” Final Act. 7. The Examiner’s
reason for combining the ceramic sheet of Adams ‘851, required by claim
17, is supported by the evidence. Adams ’851, 2:1—18. The Examiner’s
reason for cutting the carbon-aluminum composite to produce a plate with a
ceramic surface as required by claim 18, namely, to obtain a desired shape or
size, is reasonable and not disputed. Moreover, Adams ’851 discloses shape
as a design consideration for composites with reinforcing sheets. Id. at
3:10-15.
Appellants’ additional arguments are not persuasive because Adams
’851 discloses ceramic plates for reinforcing a metal-carbon composite. As
discussed earlier, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co.,
874 F.2d at 807. Also, as discussed above in connection with claim 1, the
fact that a prior art reference discloses an impregnation or infiltration
method for producing a metal-carbon composite does not alone teach away
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from combination with the teachings of Adams ’995. In order to be said to
teach away, the reference would have to discourage a skilled artisan from
following the path set out in the reference, or lead the skilled artisan in a
direction divergent from the path that was taken by the applicant. In re
Gurley, 27 F.3d at 553. As the Examiner finds, and Appellants do not
dispute, the impregnation method is a method acknowledged in Adams ’995.
Ans. 14. Because the methods of Adams ’995 and Adams ’851 are
alternative methods for producing carbon-metal composites, and specifically
carbon-aluminum composites as described in Adams ’995, this suggests that
the additional reinforcement plates taught by Adams ’851 would have been
an obvious modification for strengthening the molded product of Adams
’995.
Appellants’ arguments are also unpersuasive to the extent they seek to
go beyond the teachings of Adams ’851 for reinforcing a composite and
bodily incorporate the layers as well as the process of Adams ’851 in the
process of Adams ’995. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”); In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references
be physically combinable to render obvious the invention under review.”); In
re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Appellants also assert that the Examiner reversibly erred by not
addressing “how the combination of the reference would perform such a
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cutting or slicing process” (App. Br. 18—19) as required by claim 18. In
response to the Examiner’s finding that “cutting is a means of attaining the
final shape and/or size that is desired” (Final Act. 7), Appellants do not
direct us to any evidence that this would exceed the level of skill in the art
and do not persuasively dispute this finding of fact underlying the
Examiner’s conclusion that cutting would have been obvious. Appellants’
assertion of error fails to address how the level of skill in the art impacts the
Examiner’s obviousness analysis. Based on the cited prior art references, we
are not persuaded that cutting would be beyond the skill of a person having
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in
the art does not give rise to reversible error ‘where the prior art itself reflects
an appropriate level and a need for testimony is not shown’”) (quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
1985).
In sum, Appellants have failed to identify reversible error in the
Examiner’s rejection of claims 17 and 18 under 35 U.S.C. § 103(a) over the
combination of Adams ’995 and Adams ’851. Accordingly, we affirm the
rejection of claims 17—19 and 22—24.
Rejection 6: Adams ’995, Taheda, and Adams ’851
It is the Examiner’s position that Adams ’995, Takeda, and Adams
’851 suggest the subject matter of claim 20 for the reasons stated on page 7
of the Answer and page 8 of the Final Action. Claim 20 depends from claim
18 and further recites “wherein the graphitic particles comprise graphitic
needle cokes.” App. Br. 21 (Claims App’x).
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In the Appeal Brief, Appellants argue that “Claim 20 is patentable for
similar reasons as given above with respect to Claims 17 and 18.” App. Br.
19. Appellants also argue that “Claim 20 is patentable for similar reasons as
given above with respect to Claim 1.” Id.
Appellants’ arguments are not persuasive for the same reasons
discussed above in connection with claims 1,17, and 18. Accordingly, we
affirm the rejection of claim 20.
CONCLUSION
For the foregoing reasons, we reverse the Examiner’s rejection under
35 U.S.C. § 112, first paragraph, and we affirm all of the Examiner’s
rejections under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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