Ex Parte Nicolas et al

Patent Trial and Appeal Board

Feb 28, 2018

14359159 (P.T.A.B. Feb. 28, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/359,159 05/19/2014 Serge Nicolas 0078840-000118 2582
21839 7590 03/02/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
NGUYEN, HAIDUNG D
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGE NICOLAS, ALEXANDER KORZHENKO,
AMELIE MERCERON, and YVAN LECOMTE
Appeal 2017-006523
Application 14/359,159
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER L. OGDEN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—12. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
Appeal 2017-006523
Application 14/359,159
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A process for the preparation of a pasty composition
based on carbon-based conductive fillers, comprising:
(i) the introduction into a kneader, and then the kneading,
of carbon-based conductive fillers, of at least one polymeric
binder, of at least one solvent and of at least one polymeric
dispersant distinct from said binder, selected from the group
consisting of poly(vinylpyrrolidone), poly(phenylacetylene),
poly(meta-phenylene vinylidene), polypyrrole, poly(para-
phenylene benzobisoxazole), poly(vinyl alcohol) and their
mixtures, in order to form a masterbatch comprising a
proportion by weight of 15% to 40% of carbon-based
conductive fillers and of 20% to 85% of solvent and in which
the ratio by weight of the polymeric binder to the carbon-based
conductive fillers is between 0.04 and 0.4 and the ratio by
weight of the polymeric dispersant to the carbon-based
conductive fillers is between 0.1 and 1, limits included;
(ii) the extrusion of said masterbatch in a solid form;
(iii) the diluting of said masterbatch in a solvent which is
identical to or different from that of stage (i), in order to obtain
a pasty composition, the pasty composition having a viscosity
of between 200 and 1000 mPa.s at a temperature of 23°C.
Appellant1 requests review of the Examiner’s rejection of claims 1—12
under 35 U.S.C. § 103(a) as unpatentable over Nicolas (US 2011/0256454
Al, published October 20, 2011) and Xing (US 2011/0171364 Al,
published July 14, 2011). App. Br. 4; Final Act. 2.
1 Arkema France is the Applicant and is also identified as the real party in
interest in the Appeal Brief. App. Br. 2.
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Application 14/359,159
Appellant addresses only claims 1 and 11 using essentially the same
line of arguments with respect to the viscosity of the composition. See
generally App. Br. Accordingly, we select claim 1 as representative of the
subject matter before us for review on appeal and decide the appeal as to the
ground of rejection based on the arguments made by Appellant in support of
patentability of claim 1.
OPINION
Prior Art Rejection
Claim 1
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejections of claims 1—12 for the
reasons presented by the Examiner. We add the following for emphasis.
The claimed invention is directed to a process for the preparation of a
pasty composition based on carbon-based conductive fillers where the
resulting pasty composition has a viscosity of between 200 and 1000 mPa.s
at a temperature of 23 °C. App. Br. 3^4.
The Examiner finds Nicolas discloses a pasty composition that, like
the pasty composition resulting from the claimed process, is made from the
combination of carbon-based conductive fillers, a polymeric binder, and at
least one solvent where the disclosed amounts for these components overlap
the claimed amounts for the same components. Final Act. 2—3; Nicolas
19—24, 43—58, 70—72 and examples 1 and 2. While Nicolas does not
disclose the addition of a dispersant, the Examiner finds Xing discloses as
known to use a dispersant, such as polyvinylpyrrolidone (PVP), in the
amounts claimed in pasty compositions comprising carbon-based conductive
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Application 14/359,159
fillers to reduce or eliminate the amount of polymeric binder needed in the
pasty composition. Final Act. 3; Xing || 11, 38, 61 and Figure 3. Xing also
discloses that the dispersant serves as an aid for dispersing carbon nanotubes
(carbon-based conductive fillers) in a solvent. Xing 138. The Examiner
determines that it would have been obvious to one skilled in the art to use
Xing’s dispersant in Nicolas’s pasty composition for the reasons given by
Xing. Final Act. 3. The Examiner also determines that, while Nicolas does
not disclose a viscosity for the compositions, one skilled in the art would
expect the claimed viscosity would necessarily be present in the prior art
pasty composition because the claimed and prior art products (pasty
compositions) are identical or substantially identical in structure or
composition, or are produced by identical or substantially identical
processes. Id. at 4.
Appellant argues the Examiner has not provided adequate evidence or
scientific reasoning to support the finding that compositions made by the
process from the combined teachings of Nicolas and Xing inherently possess
the same viscosity as the claimed composition. App. Br. 5. According to
Appellant, by basing the inherency on the alleged identical nature of the
compositions, the Examiner completely ignores that the claimed viscosity
results from specific combinations of at least four components with precise
ranges/ratios, extruding this specific combination, and then diluting this
extrusion to obtain a pasty composition with the claimed viscosity. Id. That
is, Appellant contends the Examiner fails to consider that not all pasty
compositions will have the claimed viscosity. Id. Appellant further argues
the Examiner has not pointed to any teaching in the cited references, or
provided any explanation based on scientific reasoning, that would support
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Application 14/359,159
the conclusion that those skilled in the art would have considered it obvious
to optimize the cited art compositions by decreasing their viscosity to the
level recited in the claims. Id. at 6.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans.6—10. The mere recitation of a property or characteristic
not disclosed by the prior art does not necessarily confer patentability. Cf. In
re Skoner, 517 F.2d 947, 950 (CCPA 1975). Where the Examiner
establishes a reasonable belief that the property or characteristic recited in
the claims would have been inherent to the product or process, the burden of
proof shifts to Appellant to show that this characteristic or property is not
possessed by the prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
As noted above and in the Answer, the Examiner established that the
pasty compositions resulting from prior art process and the claimed process
are identical or substantially identical. Final Act. 2-4; Ans. 6—7. Thus, the
Examiner has provided a reasonable basis for one skilled in the art to believe
that the pasty compositions of the prior art possess the claimed viscosity
property. Having established this, it is proper to shift the burden to
Appellant to show that this characteristic or property is not possessed by the
prior art. In re Best, 562 F.2d at 1255. Further, the reference to Nicolas and
the instant application are owned by the same assignee (Arkema France) and
share four common inventors. Thus, the reference to Nicolas is Appellant’s
own prior art and Appellant is in the best position to explain the reference
and distinguish the claimed method from the method disclosed in Nicolas.
Appellant has not proffered evidence showing any difference in the
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properties between the claimed pasty composition and the one of the prior
art.
While Appellant argues Xing’s pasty compositions have viscosities
falling outside the claimed range for viscosities (App. Br. 7—8), this
argument does not address the reasons presented by the Examiner for
combining the teachings of the prior art. That is, the Examiner is not
replacing Nicolas’s pasty composition with Xing’s pasty composition but,
instead, determines that one skilled in the art would use a dispersant in
making Nicolas’s pasty composition for the reasons disclosed by Xing.
Final Act. 3. Given that Xing discloses the dispersant as an aid for
dispersing carbon nanotubes (carbon-based conductive fillers) in a solvent
(Xing 138), there is a reasonable basis for one skilled in the art to
reasonably expect that Xing’s dispersant would have been suitable as an aid
for dispersing carbon nanotubes (carbon-based conductive fillers) in a
solvent used in making Nicolas’s pasty composition. In re O’Farrell, 853
F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is
required is a reasonable expectation of success.”). Appellant’s arguments do
not adequately explain why one skilled in the art would not have found
Xing’s dispersant suitable for making Nicolas’s pasty composition.
Appellant does not adequately explain why one skilled in the art would not
have expected Xing’s dispersant to also serve as an aid for dispersing carbon
nanotubes (carbon-based conductive fillers) in a solvent in Nicolas’s process
for making a pasty composition based on carbon-based conductive fillers.
Accordingly, we affirm the Examiner’s rejection of claims 1—12 under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and given
above.
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Application 14/359,159
ORDER
The Examiner’s rejection of claims 1—12 under 35 U.S.C. § 103(a) is
affirmed.
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)(l)(iv).
AFFIRMED
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