Ex Parte Sheem et al

Board of Patent Appeals and Interferences

Aug 24, 2012

11515372 (B.P.A.I. Aug. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/515,372 08/31/2006 Kyou-Yoon Sheem 58333/P849 5278
23363 7590 08/27/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
STALDER, MELISSA A
ART UNIT PAPER NUMBER
1732
MAIL DATE DELIVERY MODE
08/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KYOU-YOON SHEEM,
SUNG-SOO KIM, YOUNG-HEE LEE,
and YOUNG-SEAK LEE
____________

Appeal 2011-003624
Application 11/515,372
Technology Center 1700
____________

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-12. Claim 11 is
illustrative:
11. A porous carbon material prepared by a method comprising:

mixing a carbon precursor and a pore-forming material in a solvent to
produce a mixture;

spinning the mixture to produce a fiber;
treating the fiber with an acid or an alkali to remove the pore-forming
material and produce a porous fiber; and
Appeal 2011-003524
Application 11/515,372

2

heat treating the porous fiber.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Yoshino et al. (Yoshino) Re. 34,991 Jul 4, 1995
Chung et al. (Chung) 5,990,041 Nov. 23, 1999
Appleby et al. (Appleby) US 2004/0241063 A1 Dec. 2, 2004
Shirahige et al. (Shirahige) US 2006/0019162 A1 Jan. 26, 2006
Appellants’ claimed invention is directed to a porous carbon material
prepared by the recited method.
Appealed claims 1-3, 5, 6, 8, 11, and 12 stand rejected under 35
U.S.C. § 102 (b) as anticipated by or, in the alternative, under 35 U.S.C. §
103(a) as being unpatentable over Chung. The appealed claims also stand
rejected under 35 U.S.C. 103(a) as follows:
a) claims 1, 4, 11, and 12 over Chung in view of Shirahige,
b) claims 1, 9, 10, and 11 over Chung in view of Appleby,
c) claims 1-3, 7, and 12 over Chung in view of Yoshino.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with Appellants that the
Examiner’s rejections are not well founded.
The appealed claims are drafted in product-by-process format. It is
well settled that if 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 art product was made by a different process. In re Thorpe,
777 F.2d 695, 697 (Fed. Cir. 1985). However, the initial burden is upon the
Examiner to establish that the claimed product is essentially the same or an
Appeal 2011-003524
Application 11/515,372

3
obvious variant over the prior art product. One way of fulfilling this burden
is to demonstrate a close correspondence between the recited process and the
process of the prior art. Only then does the burden shift to the applicant to
show a patentable distinction between the claimed and prior art products.
In the present case, the Examiner has not carried this initial burden. It
is not enough for the Examiner to point out that Chung teaches making
carbon filaments comprising mesopores, which filaments, in the words of
the Examiner, “would obviously have surface pores, internal pores and
channels connecting the pores” (Ans., p. 3, first para.). Appellants’
declaration demonstrates that porous carbon filaments produced by different
processes have distinct structures. Appellants have pointed out that the
claimed process and the process of Chung are quite different, and since the
Examiner has not set forth a rationale why it would be reasonable to expect
that the different processes produce essentially the same porous carbon
structure, there is no factual basis in support of the Examiner’s rejection.
The Examiner fails to address the difference in processes in the Response
section of the Answer.
The citations of Shirahige, Appleby, and Yoshino in separate § 103
rejections do not alleviate the basic deficiency of the Chung disclosure
discussed above.
Appeal 2011-003524
Application 11/515,372

4
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.
REVERSED

cam