Ex Parte Nguyen

Board of Patent Appeals and Interferences

Oct 20, 2009

10987949 (B.P.A.I. Oct. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KHE C. NGUYEN
____________

Appeal 2009-006509
Application 10/987,949
Technology Center 1700
____________

Decided: October 20, 2009
____________

Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-6, 14-24, and 26-29. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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I. STATEMENT OF THE CASE
The invention relates to a process for making “liquid” nano carbon
having an average particle size of less than 30 nanometers by attaching
electrolytic functional groups to a carbon particle and exposing the particle
to a strongly electrolytic environment (through solvents and electrolytic
additives, for example) to isolate and disperse the particles using
electrostatic repulsive forces (Spec. 3, ll. 6-9; 9, ll. 2-5 and 13-22; Br. 2).
Claims 1, 15, and 26 are illustrative of the subject matter on appeal:
1. A fabricated particle, comprising:
a nano carbon formed in a liquid, the nano carbon having individual
particles with an average size below 30 nanometers, each particle comprised
of a solid carbon based core and a shell made with one or more anchor
groups chemically attached to the shell.
15. The particle of claim 1, wherein the nano carbon comprises an
ink.
26. An anchor group formed by:
a. doping a surface of a raw material with a metal transition
catalyst;
b. soaking the catalyst doped raw material in a proton source
and/or a hydroxyl source agent having a carbon based core;
c. baking the carbon based core at 600C - 1000C followed by
quick water quenching prior to chemical attachment of the anchor group;
and
d. attaching the anchor group onto the surface of the carbon based
core to form a shell, wherein the anchor groups forming the shell of the
carbon based core comprise electrolytic chemical groups which can form
charge for the liquid nano carbon in an electrolytic environment.
Appellant requests review of the rejections maintained by the
Examiner, namely, the rejections of:
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1. claim 15 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
2. claims 1, 3-4, 14-24, and 26-29 rejected under 35 U.S.C. § 102(b)
as anticipated by Chiang (US 5,648,523; issued July 15, 1997); and
3. claims 1, 2, 6, 14-24, and 26-29 rejected under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as obvious
over, Belmont (US 5,630,868; issued May 20, 1997);
4. claims 1, 5-6, 14-24, and 26-29 rejected under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as obvious
over, Chen (Chen, et al., “Noncovalent Sidewall Functionalization of Single-
Walled Carbon Nanotubes for Protein Immobilization,” J. Am. Chem. Soc.;
123:3838-3839 (2001); and
5. claims 1, 2, 6, 14-24, and 26-29 rejected under 35 U.S.C. § 102(b)
as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as obvious
over, Appellant’s admissions from the Specification.
We address the rejection of claim 15 based on indefiniteness first.
With respect to the remaining rejections, Appellant presents arguments
directed only to claims 1 and 26. Accordingly, we decide these rejections on
the basis of representative independent claims 1 and 26. The remaining
dependent claims stand or fall with these representative claims.
II. INDEFINITENESS
A. ISSUE ON APPEAL
The Examiner rejects claim 15 because it defines the solid nano
carbon particle of claim 1 as comprising, i.e., “including.” a liquid ink and
the solid particle cannot include a liquid ink (Ans. 11). Appellant contends
that claim 15 is definite because the term “comprises” means “to form or
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make up,” such that claim 15 is properly interpreted as “nano-carbons make
up a liquid” (Br. 3-4).
An issue on appeal arising from the contentions of Appellant and the
Examiner is: has Appellant shown that the Examiner reversibly erred in
interpreting “comprising” and further determining that claim 15 is
indefinite?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Claim 1 is directed to “a fabricated particle,” and Appellant
does not contest the Examiner’s finding that the claimed “fabricated
particle” is a solid particle or that an ink is a liquid (see generally Br.; Ans.
11).
2. Appellant’s Specification discloses forming ink from “liquid”
nano carbon having individual particles (solid carbon-based cores with an
anchor group shell) in an electrolytic environment such as a solvent (Spec. 3,
ll. 1-9 and 4, ll. 3-14)
C. PRINCIPLES OF LAW
“In the patent claim context the term ‘comprising’ is well understood
to mean ‘including but not limited to.’” CIAS, Inc. v. Alliance Gaming
Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007); see also Hewlett–Packard Co.
v. Repeat–O–Type Stencil Manufacturing Corp., Inc., 123 F.3d 1445, 1451
(Fed. Cir. 1997) (“The claim term ‘including’ is synonymous with
‘comprising,’ thereby permitting the inclusion of unnamed components.”);
“[T]his usage of ‘comprising’ also embraces ‘comprises’ and ‘which
comprises’” CIAS, 504 F.3d at 1360-61.
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The specification informs the meaning of the claims. Thus, claims
may be indefinite when a conflict between the claimed subject matter and
the specification disclosure renders the scope of the claims uncertain. See
In re Cohn, 438 F.2d 989, 993 (CCPA 1971) (determining that the claim
term “opaque finish” took on the meaning ascribed to it in the specification
which resulted in an inexplicable inconsistency within the claims rendering
them indefinite); In re Moore, 439 F.2d 1232, 1235 n.2 (CCPA 1971) (claim
language must be analyzed in light of the teachings of the prior art and
specification and a claim may upon reading the specification take on an
unreasonable degree of uncertainty such that it is indefinite).
D. ANALYSIS
“Comprises” is a term of art in patent law having the same meaning as
“includes” or “contains.” We agree with the Examiner that claim 15 is
properly interpreted to require the particle of claim 1 to include an ink.
However, the Specification describes the converse relationship between the
ink and particles; it is the ink that includes the particles (FF 2). Claim 15,
therefore, is inconsistent with the Specification.
Appellant has not shown that the Examiner reversibly erred in
interpreting claim 15. As such, we agree with the Examiner that the
language of claim 15 is indefinite.
III. PRIOR ART REJECTIONS – Claim 1
A. ISSUE ON APPEAL
With respect to claim 1, Appellant asserts the same general arguments
with respect to each of the prior art, namely, that the prior art references do
not teach (a) the nano carbon formed in a liquid, (b) the particles having an
average particle size of less than 30 nanometers, or (c) a solid carbon based
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core and a shell made with one or more anchor groups chemically attached
to the shell.
An issue on appeal arising from the contentions of Appellant and the
Examiner regarding claim 1 is: has Appellant shown that the Examiner
reversibly erred in finding that each of Chiang, Belmont, Chen, and the
Appellant’s admissions disclose (or suggest, where appropriate) these
limitations of claim 1?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
3. Chiang teaches forming functionalized fullerenes in a liquid
environment, using solvent such as water, benzene or toluene (Chiang, col.
7, ll. 19-50).
4. Appellant’s Specification states that “[w]ithout the heat
treatment [of the present invention], the diazo coupling products have never
gone down to desirable nano particle size in the range below 30nm, rather
than staying in an aggregate form having average particle size in the range
100-150nm” (Spec. 16, ll. 1-3).
5. Belmont is directed to an ink jet ink including an aqueous
vehicle and a modified carbon, such as “graphite, carbon black, vitreous
carbon, activated charcoal, activated carbon, and mixtures thereof”
(Belmont, col. 4, ll. 7-15).
6. Belmont teaches that the size of the modified carbon product is
preferably no larger than about 2 microns, more preferably one micron or
less (Belmont, col. 8, ll. 9-12).
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7. Belmont teaches that it is desirable to make the carbon pigment
particles as small as possible (Belmont, col. 2, ll. 37-41) and describes
grinding the carbon to a fine particle size (Belmont, col. 5, ll. 35-39).
8. Chen teaches forming functionalized single-walled carbon
nanotubes (SWNT) in an organic solvent, such as dimethylformamide
(DMF) or methanol (Chen, at 3838, ¶ spanning col. 1-2).
9. The caption provided for Figure 2 of Chen indicates that a
SWNT bundle has a diameter of 4.5 nm (Chen, at 3839 col. 2, Figure 2).
Figure 1 of Chen shows 50 nm and 20 nm scale images of SWNT bundles
(Chen, at 3839, col. 1, Figure 1).
C. PRINCIPLES OF LAW
“[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself.”
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). It has long been held that
“[i]f the product in a product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the
prior product was made by a different process.” SmithKline Beecham Corp.
v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006) (quoting Thorpe,
777 F.2d at 697).
Where the Examiner has reason to believe that a claimed property
may, in fact, be an inherent characteristic of the prior art product, an
Examiner possesses the authority to require applicant to prove that the
subject matter shown to be in the prior art does not in fact possess the
property. In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). When the
Examiner relies upon a theory of inherency, “the examiner must provide
a basis in fact and/or technical reasoning to reasonably support the
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determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990) (emphasis omitted).
D. ANALYSIS
Chiang
With respect to the “formed as a liquid” limitation, claim 1 is a
product claim directed to a fabricated particle. We agree with the Examiner
that “formed in liquid” is a process limitation that does not structurally limit
the particle claimed (Ans. 9-10). Apart from merely asserting that Chiang
does not teach this limitation, Appellant has not addressed the Examiner’s
specific reasoning articulated in the Answer or explained why the
Examiner’s interpretation is incorrect (see generally Br. 4). In any event,
such conclusory statements fall well short of refuting the Examiner’s
product-by-process claim interpretation. Moreover, we find that Chiang
teaches forming functionalized fullerenes in a liquid (FF 3).
With respect to the particle size, the Examiner finds, with evidence
provided by Dresselhaus, et al., Science of Fullerenes and Carbon
Nanotubes, p. 70 “Table 3.4,” Academic Press (1996), that the fullerenes
taught by Chiang are known in the art to be substantially smaller than 30
nanometers (Ans. 12). The Examiner has established a reasonable basis for
concluding that the particles taught by Chiang inherently have the claimed
particle size. Moreover, Appellant does not dispute this finding (see
generally Br. 4). Rather, Appellants assert that only via the method taught
by the present invention could one of ordinary skill in the art arrive at a
carbon black nano particle having an average particle size in the nano scale,
as recited in claim 1 (Br. 4). We agree with the Examiner that claim 1 is not
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limited to carbon black nano carbon (Ans. 13). Accordingly, Appellant’s
arguments regarding the problems with forming carbon black nano carbon
are not relevant to the Examiner’s rejection based on a reference that teaches
a nano carbon fullerene.
With respect to the core and anchor group shell, again Appellant
merely asserts that Chiang does not teach this limitation (Br. 4). The
Examiner finds that the fullerene constitutes the claimed solid carbon based
core and the functional groups attached thereto constitute the anchor groups
that make up the shell (Ans. 12). Appellant has not addressed the
Examiner’s specific findings nor explained why the Examiner’s findings are
deficient.
Accordingly, Appellant has not shown that the Examiner reversibly
erred in finding that Chiang describes particles having the structure required
by the limitations of claim 1.
Belmont
The Examiner states that “[t]he carbon black particles necessarily
meet the particle size limitation” (Ans. 5) and that “changes in size do not
impart patentability” (citing MPEP § 2144.04 IV(A)) (Ans. 16). The
Examiner further notes that Belmont teaches a means for milling the carbon
black to very small sizes (Ans. 16). We disagree with the Examiner’s
reasoning for finding that the particle size is inherent or, alternatively, would
have been obvious to one of ordinary skill in the art.
Appellant’s Specification indicates that it is the process described
therein which results in a carbon product having a particles size of 30 nm or
less, without which aggregates form having an average particle size in the
range of 100-150 nm (FF 4). Such a statement is not inconsistent with the
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teachings of Belmont, which explicitly states that the size of the modified
particle is one micron or less (FF 6). One micron is a substantial size
difference from 30 nanometers. Unlike Chiang, Belmont is directed to
carbon particles of graphite, carbon black, vitreous carbon, activated
charcoal, activated carbon, and mixtures thereof (FF 5). The Examiner has
provided no evidence that the carbon particles of Belmont are necessarily as
small as 30 nm or less to rebut the statements tending to support the opposite
conclusion in Appellant’s Specification. Accordingly, we cannot agree with
the Examiner’s finding that a particle size of less than 30 nanometers is
inherent in the carbon particles taught by Belmont.
Further, the Examiner’s reliance on MPEP § 2144.04 IV(A) for a
conclusion of obviousness is misplaced. The Examiner has improperly
relied on the case law of this section as a per se rule of obviousness that a
mere change in particle size cannot support patentability. The issue of
obviousness must always be determined on a case-by-case basis considering
the specific recitations of the claimed invention and the specific teachings of
the applied prior art. Unlike the fullerenes taught by Chiang, the Examiner
has provided no evidence to support the position that one of ordinary skill in
the art would have been capable of achieving a particle size of less than 30
nanometers using any of the types of carbon and the process taught by
Belmont. Belmont’s teaching of a preferred size less than 1 micron (FF 5)
and milling or grinding to achieve as small a particle as possible (FF 7) does
not establish that those of ordinary skill in the art were capable of achieving
the much smaller 30 nanometer particle sizes, particularly in light of
Appellant’s arguments and the evidence in Appellant’s Specification
indicating that there are a limited number of ways to achieve a particle size
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of less than 30 nanometers for the forms of carbon disclosed by Belmont (FF
4; Br. 4). The Examiner must provide further evidence to establish a prima
facie case that reducing the particle size from 1 micron to 30 nanometers
would have been obvious to one of ordinary skill in the art.
Accordingly, Appellant has shown that the Examiner reversibly erred
in finding that Belmont teaches the particle size limitations of claim 1.
Chen
With respect to the “formed as a liquid” limitation, again we agree
with the Examiner that “formed in liquid” is a process limitation that does
not structurally limit the particle claimed (Ans. 15). Appellant’s mere
assertion that Chen does not teach this limitation does not address the
Examiner’s reasoning and falls well short of refuting the Examiner’s claim
interpretation. Moreover, we find that Chen teaches forming functionalized
single-walled carbon nanotubes in a liquid (FF 8).
With respect to the particle size, the Examiner finds that “[t]he
claimed size is unremarkable for carbon nanotubes” (Ans. 15). We agree.
We find sufficient evidence in the teachings of Chen that the single walled
nanotubes (SWNT) are inherently smaller than 30nm such that the burden
shifted to Appellant to provide evidence to the contrary (FF 9). In addition,
because Chen is directed to SWNT rather than to carbon black (FF 7),
Appellant’s position directed to the problems of aggregates forming with
carbon black is not persuasive (Br. 4). Nor is Appellant’s mere assertion
that the particle size is not taught (Br. 9). We also do not find Appellant’s
statement that “[t]he Belmont process involves surface modification, but the
instant system involves bulk modification” to be persuasive (Br. 7). We
decline to read into claim 1 any requirement for “bulk modification.”
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With respect to the core and anchor group shell, Appellant merely
asserts that Chen does not teach this limitation (Br. 9). The Examiner finds
that the SWNT constitutes the claimed solid carbon based core and the
“Scheme 1” functional groups attached thereto constitute the anchor groups
that make up the shell (Ans. 15). Again, Appellant has not addressed the
Examiner’s specific findings or explained why the Examiner’s findings are
deficient.
Accordingly, Appellant has not shown that the Examiner reversibly
erred in finding that Chen describes particles having the structure required
by the limitations of claim 1.
Appellant’s admissions
The Examiner states that Appellant’s Specification discloses that
functionalized nano carbon is well known in the art (Ans. 9 and 17). While
the Examiner’s finding is accurate (FF 10), Appellant’s Specification further
distinguishes between conventional functionalized carbon particles in the
100-150 nm range and carbon particles having a particles size less than 30
nm based on the process used for forming the particles (FF 4). As such, the
Examiner has no basis for finding that Appellant also admits that the
claimed particle size was known in the art. Further, the Examiner has not
rebutted the statements in Appellant’s Specification tending to support the
opposite conclusion that particle size using conventional processes would
inherently be far larger than 30nm (FF 4).
Further, the Examiner has improperly relied on the case law of MPEP
2144.04 IV(A) as a per se rule of obviousness. The Examiner has provided
no evidence to support the position that one of ordinary skill in the art would
have been capable of achieving a particle size of less than 30 nanometers
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based on Appellant’s admissions. To the contrary, Appellant asserts that
such a small particle size was not known in the art (FF 4). The Examiner
must provide further evidence to establish a prima facie case that reducing
the particle size from 100-150 nanometers to 30 nanometers would have
been within the capabilities and thus obvious to one of ordinary skill in the
art.
Accordingly, Appellant has shown that the Examiner reversibly erred
in finding that admissions in Appellant’s Specification teach or suggest the
particle size limitations of claim 1.
IV. PRIOR ART REJECTIONS – Claim 26
A. ISSUE ON APPEAL
With respect to claim 26, Appellant asserts the same arguments with
respect to each of the prior art, namely, that the prior art references do not
teach the process steps recited in claim 26 (Br. 5-7, 9, and 10). The
Examiner asserts that claim 26 is a product-by-process claim which is
structurally limited to an anchor group, and that all that needs to be taught by
the reference for a finding of anticipation is the recited anchor group (see
e.g., Ans. 13).
An issue on appeal arising from the contentions of Appellant and the
Examiner regarding claim 26 is: has Appellant shown that the Examiner
reversibly erred in interpreting claim 26 as a product-by-process claim in
which the process steps fail to further structurally define the recited “anchor
group”?
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
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10. Appellant does not address the Examiner’s product-by-process
interpretation of claim 26 (see generally Br.).
11. Appellant’s Specification indicates that anchor groups, which
form a charge in an electrolytic environment, include, among other organic
solvent soluble chemical functional groups, alkyl and aryl alkyl groups with
and without an attached ester (-COOR) (Spec. 3, l. 15 to 4, l. 2).
12. Chiang teaches the use of an alkyl or an alkylaryl group
attached to the fullerene (Chiang, col. 1, ll. 28-43).
13. Belmont teaches the use of an alkyl functional group attached to
the carbon core (Belmont, col. 4, ll. 24-26).
14. Chen teaches a 1-pyrenebutanoic acid, succinimidyl ester
adsorbed onto the hydrophobic surfaces of the SWNT (Chen, at 3838, ¶
spanning col. 1-2).
15. Appellant’s Specification admits that it is known in the art to
attach electrolytic chemical groups to carbon powder (Spec. 11, ll. 20-23).
C. PRINCIPLES OF LAW
The same principles of law recited above are also applicable to the
issue stated above for claim 26.
D. ANALYSIS
Claim 26 is directed to “[a]n anchor group formed by . . .” (claim 26).
We agree with the Examiner that the recited steps of paragraphs (a) to (d) of
claim 26 are process limitations that are pertinent only insofar as they
structurally limit the anchor group claimed (Ans. 13). Appellant does not
contest this claim interpretation by the Examiner but, rather, merely asserts
that each reference does not teach the recited steps (FF 10). Appellant has
not addressed the Examiner's reasoning or explained why the Examiner’s
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interpretation is incorrect. In any event, such conclusory statements fall well
short of refuting the Examiner’s product-by-process claim interpretation.
Moreover, assuming for the sake of argument that some electrolytic
properties are to be ascribed to the anchor group based on the language of
paragraph (d), there is sufficient evidence that the prior art includes
functional groups which have the claimed electrolytic properties (FF 11-15).
Accordingly, Appellant has not shown that the Examiner reversibly
erred in interpreting claim 26 as a product-by-process claim in which the
process steps fail to further structurally define the recited “anchor group.”
V. CONCLUSION
For the reasons discussed above, we summarize our conclusions as
follows.
1. We sustain the rejection of claim 15 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. We sustain the rejection of claims 1, 3-4, 14-24, and 26-29 under
35 U.S.C. § 102(b) as anticipated by Chiang.
3. We sustain the rejection of claims 26-29, but do not sustain the
rejection of claims 1, 2, 6, and 14-24, under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative under 35 U.S.C. § 103(a) as obvious
over, Belmont.
4. We sustain the rejection of claims 1, 5-6, 14-24, and 26-29 under
35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35 U.S.C. §
103(a) as obvious over, Chen; and
5. We sustain the rejection of claims 26-29, but do not sustain the
rejection of claims 1, 2, 6 and 14-24, under 35 U.S.C. § 102(b) as anticipated
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by, or in the alternative under 35 U.S.C. § 103(a) as obvious over,
Appellant’s admissions from the Specification.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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