Ex Parte Smith et al

Board of Patent Appeals and Interferences

Oct 28, 2009

11152983 (B.P.A.I. Oct. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES DAVID BLACKHALL SMITH,
GARY STEVENS, and
JOHN WILLIAM WOOD
____________

Appeal 2009-004033
Application 11/152,983
Technology Center 1700
____________

Decided: October 28, 2009
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appeal 2009-004033
Application 11/152,983

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9-15.1 (App. Br. 4). We have jurisdiction pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants describe a continuous organic-inorganic resin. Claim 9,
reproduced below, is representative of the subject matter on appeal.
9. A continuous organic-inorganic resin comprising:

a host resin network; and

inorganic high thermal conductivity fillers evenly
dispersed in said host resin network and essentially completely
co-reacted with said host resin network;

wherein said high thermal conductivity fillers have a
length of between 10nm and 100µ and an aspect ratio of 10-50;

wherein said high thermal conductivity fillers are
selected from at least one of oxides, nitrides, and carbides;

wherein said high thermal conductivity fillers have been
surface treated to introduce surface functional groups that
allows for the essentially complete co-reactivity with said host
resin network;

wherein said continuous organic-inorganic resin
comprises a maximum of 60% by volume of said high thermal
conductivity fillers.

1 Claims 1-8 and 16-24 have been canceled. (Appeal Brief filed June 30,
2008, hereinafter “App. Br.,” 2).
Appeal 2009-004033
Application 11/152,983

3
THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jackson US 4,361,661 Nov. 30, 1982
Chopra US 2005/0116336 A1 Jun. 2, 2005
The Examiner rejected claims 9-15 under 35 U.S.C. § 103(a) as being
unpatentable over Chopra in view of Jackson.

ISSUE
Have Appellants shown that the Examiner reversibly erred in
determining that Chopra is entitled to the filing date of any of the provisional
applications to which it claims priority for the concept of “inorganic high
thermal conductivity fillers evenly dispersed in said host resin network?”

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. The present Application was filed on June 14, 2005 and claims
priority to US provisional application 60/580,023, filed on June 15,
2004. (USPTO PALM database; Spec. [0001]).
2. There is no dispute that Appellants are entitled to the filing date of
US provisional application 60/580,023.
3. Chopra was filed on September 16, 2004 and published on June 2,
2005. (Chopra, front page of US Patent Application Publication
US 2005/0116336 A1).
Appeal 2009-004033
Application 11/152,983

4
4. Chopra claims the benefit of six provisional applications including
60/503,591 and 60/503,613 both filed on September 13, 2003 and
incorporated by reference into Chopra. (Chopra, front page of US
Patent Application Publication US 2005/0116336 A1; paras.
[0001]-[0015]).
5. The Examiner found that at least Provisional Application
60/503,591 supports the concept of “inorganic high thermal
conductivity fillers evenly dispersed in said host resin network.”
(Examiner’s Answer entered September 2, 2008, hereinafter
“Ans.” 5).
6. Appellants do not challenge the Examiner’s finding that
Provisional Application 60/503,591 supports the concept of
“inorganic high thermal conductivity fillers evenly dispersed in
said host resin network.” (See generally, App. Br. and Reply Brief
filed November 3, 2008).

PRINCIPLES OF LAW
In order to be entitled to the benefit of a provisional application, one
requirement is that the invention presently claimed must have been disclosed
in the provisional application in the manner provided by 35 U.S.C. § 112,
first paragraph. See 35 U.S.C. § 119(e)(1); New Railhead Mfg., L.L.C. v.
Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002).

Appeal 2009-004033
Application 11/152,983

5
ANALYSIS
We confine our discussion to appealed claim 9, which contain claim
limitations representative of the arguments made by Appellants pursuant to
37 C.F.R. § 41.37(c)(1)(vii).
At the outset, Appellants’ new arguments presented in the Reply Brief
filed November 18, 2008 have not been considered for purposes of this
decision. Prior to the Reply Brief, Appellants have only argued that Chopra
should not be considered prior art to the present Application because none of
the provisional applications to which Chopra claims priority provide support
for “inorganic high thermal conductivity fillers evenly dispersed in [a] host
resin network.” (App. Br. 5-9; Response to Non-final Office Action of
December 14, 2007, p. 5-8; Response filed in conjunction with a Request for
Continued Examination (RCE) on September 14, 2007, p. 2-3). In the
Answer, the Examiner only provided additional evidence that Chopra should
be entitled to the filing dates of any of the provisional applications to which
Chopra claims priority. (Ans. 4-6). Appellants’ new arguments regarding
the alleged deficiencies in the Examiner’s combination of Chopra in view of
Jackson do not directly respond to the Examiner’s statements made in the
Answer. In addition, Appellants have not provided a sufficient showing of
good cause to justify consideration of the arguments presented in the Reply
Brief.2 See 37 C.F.R. § 41.37(c)(1)(vii) (2009).

2 Nonetheless, Appellants’ arguments, if timely presented, would not have
been persuasive. Appellants have not addressed the Examiner’s rationale
that because Jackson’s coupling agents would inherently react both with the
binder and the conductive filler, Chopra’s thermal conductive fillers would
completely react with the host resin network. (Ans. 4). In addition,
Appellants’ contention that the claimed invention does not use intermediate
Appeal 2009-004033
Application 11/152,983

6
The Examiner found that Provisional Application 60/503,591 supports
the concept of “inorganic high thermal conductivity fillers evenly dispersed
in said host resin network.” (FF 5). Appellants have not provided any
persuasive evidence to demonstrate error in the Examiner’s finding. (FF 6).
Accordingly, we affirm the Examiner’s rejection of the claims over Chopra
in view of Jackson, because the Examiner properly considered Chopra as
prior art to the present Application.

CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that Chopra is entitled to the filing date of any of the
provisional applications to which it claims priority for the concept of
“inorganic high thermal conductivity fillers evenly dispersed in said host
resin network.”

ORDER
We affirm the Examiner’s decision rejecting claims 9-15 under
35 U.S.C. § 103(a).

structures such as silane coupling agents does not structurally distinguish the
claims, which are directed to a continuous organic-inorganic resin.
Moreover, Appellants’ Specification discloses the use of silane groups to
impart surface functional groups to the thermally conductive fillers. (Spec.
[0060]).
Appeal 2009-004033
Application 11/152,983

7
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)(iv).
AFFIRMED

cam

SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830