Ex Parte Stevens et al

Patent Trial and Appeal Board

Mar 26, 2013

11529181 (P.T.A.B. Mar. 26, 2013)

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.
11/529,181 09/28/2006 Gary Stevens 2006P08263US 7974
7590 03/26/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
03/26/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GARY STEVENS, JAMES D.B. SMITH, and
JOHN W. WOOD
________________

Appeal 2011-013565
Application 11/529,181
Technology Center 1700
________________

Before RICHARD E. SCHAFER, TERRY J. OWENS, and
JEFFREY T. SMITH, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL

Appeal 2011-013565
Application 11/529,181

2

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 18-22, 24, and 27 on June 2, 2011. We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
THE INVENTION
Appellants claim a continuous organic-inorganic resin and a porous
media comprising mica paper impregnated with the continuous organic-
inorganic resin. Claim 18 is representative of the present application’s
claims and is reproduced here:
18. A continuous organic-inorganic resin comprising:
a host resin network;
a first class of inorganic high thermal conductivity fillers
evenly dispersed in said host resin network and essentially
completely co-reacted with said host resin network, wherein the
first class of inorganic fillers is effective to provide a
continuous composite material via surface functional groups on
said first class of inorganic high thermal conductivity fillers that
form covalent linkages with said host resin network; and
a second class of inorganic high thermal conductivity
fillers unevenly dispersed in said host resin network, wherein
said second class of inorganic high thermal conductivity fillers
aggregates into secondary structures;
wherein said first class and said second class of high
thermal conductivity fillers are selected from at least one of
oxides, nitrides, and carbides; and
wherein at least a portion of said first class and said
second class of high thermal conductivity fillers comprise
morphologies chosen from the group consisting of
hexagonal, cubic, orthorhombic, rhombohedral, tetragonal,
whiskers and tubes.
Appeal 2011-013565
Application 11/529,181

3
REFERENCES
Jackson US 4,361,661 Nov. 30, 1982
Chopra US 2005/0116336 A1 Jun. 2, 2005
Anton1 EP 0 081 154 A1 Jun. 15, 1983
REJECTIONS
Claims 18-20, 24 and 27 stand rejected2 under 35 U.S.C. § 103(a) as
being unpatentable over Chopra in view of Jackson (Ans. 4).
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anton in view of Chopra and Jackson (Ans. 7).
Claim 22 also stands rejected under 35 U.S.C. § 112, first paragraph
(p. 2 of the Final rejection mailed on Jun. 2, 2011). The rejection of claim 22
under 35 U.S.C. § 112, first paragraph is not being appealed (App. Br. 3).
We need to address only claim 18, which is the sole independent
claim to a continuous organic-inorganic resin. The Examiner does not rely
upon Anton for any disclosure that remedies the deficiency in Chopra and

1 We note that the Examiner’s statement of rejection of claims 21 and 22
refers to the Derwent abstract of Anton (Ans. 7). However, the Examiner
refers to the publication date of Anton as Jan. 14, 1987 (Ans. 4), which
appears to correspond to the publication date of EP 0 081 154 B1 rather than
to the publication date of the Derwent abstract itself or to the publication
date of EP 0 081 154 A1, each of which is attached to the Office action
mailed on Jan. 20, 2011. For the purpose of considering the appeal, we have
considered the Derwent abstract of EP 0 081 154 A1.
2 We note that claim 24 is omitted from the Examiner’s statement of
rejection (Ans. 4). However, claim 24 is addressed in the body of the
rejection (Ans. 7), and furthermore, Appellants request review of a rejection
of claim 24 under 35 U.S.C. § 103(a) as being unpatentable over Chopra in
view of Jackson (App. Br. 3). We therefore consider claim 24 to be rejected
under 35 U.S.C. § 103(a) as being unpatentable over Chopra in view of
Jackson.
Appeal 2011-013565
Application 11/529,181

4
Jackson as to claim 18’s continuous organic-inorganic resin which is
required by claims 21 and 22 (Ans. 7).3
DISCUSSION OF THE REJECTION OF CLAIM 18
Claim 18 requires a host resin network and two classes of inorganic
high thermal conductivity fillers. The first of the two classes of fillers is
evenly dispersed in the host resin network, and it is effective to provide a
continuous composite material via surface functional groups that form
covalent linkages with the host resin network. The second of the two classes
of fillers is unevenly dispersed in the host resin network, and it forms
aggregates into secondary structures. (Spec. ¶ [00113], p. 37).
The fillers that do not form secondary structures (i.e. the first class of
fillers) are of a different type than those that do form secondary structures;
they may be chemically different, morphologically different, or surface
treated to limit their co-reactivity (Spec. ¶ [00110], p. 36). The fillers may be
surface treated to introduce surface functional groups that allow for the
essentially complete co-reactivity with the host resin network
(Spec. ¶ [00114], pp. 37-38).
Chopra discloses nano-composite materials for thermal management
applications such as electronics, optical, and/or mechanical systems
(¶ [0025]). Nanostructures are incorporated into a base, or matrix, material
(¶ [0049]). Chopra discloses an embodiment in which nanotubes are
substantially uniformly mixed into a base material (¶ [0062], Fig. 1). Chopra

3 In claim 22 “The continuous organic-inorganic resin of claim 21” should
read “The porous media of claim 21.”
Appeal 2011-013565
Application 11/529,181

5
further discloses another embodiment in which nanotubes can be aligned
(¶ [0065], Fig. 2).
Jackson discloses thermally conductive compositions for thermal
backfill materials (col. 1, ll. 16-24) and for thermally conductive molds for
the foundry industry (col. 1, ll. 24-27). The compositions comprise an
essentially homogeneous mixture of sand or a sand-like particulate material
with a binder, wherein the binder comprises an organic adhesive having an
inorganic fine particle filler therein (col. 2, ll. 17-27). The binder is present
in at least an amount sufficient to begin to form a binder meniscus between
adjacent sand particles, while the filler is present in the binder in an amount
which significantly increases the effective thermal conductivity of the
composition (col. 2, ll. 17-21). Jackson further discloses that the backfill
composition may comprise coupling agents to increase adhesion of the
adhesive to inorganic filler and sand (col. 2, ll. 35-41).
The Examiner finds that the embodiment of Chopra in which the
nanotubes are substantially uniformly mixed into a base material (¶ [0062],
Fig. 1) corresponds to the presently recited first class of inorganic filler that
is evenly dispersed (Ans. 5).
The Examiner finds that the embodiment of Chopra in which
nanotubes can be aligned (¶ [0065], Fig. 2) corresponds to the presently
recited second class of inorganic filler that aggregates into secondary
structures (Ans. 5).
The Examiner finds that Chopra fails to disclose a filler that is
covalently bonded to and essentially completely co-reacted with the host
resin network (Ans. 5), corresponding to the presently recited first class of
Appeal 2011-013565
Application 11/529,181

6
fillers that is effective to provide a continuous composite material via
surface functional groups that form covalent linkages with the host resin
network.
The Examiner writes in the rejection that “[i]t would have been
obvious to one of ordinary skill in the art to likewise modify Chopra’s
thermal conductive composite with [a] workable amount of silane coupling
agents, as motivated by the desire to obtain the beneficiary effect of an
improved adhesion between the fillers and the host resin.” (Ans. 6).
The Examiner has thus taken the position that it would have been
obvious to incorporate a “workable amount” of a coupling agent into the
composition of Chopra.
The Examiner continues,
it would have been apparent to one of ordinary skill in the art to
initially form a homogeneous mixture of Chopra’s composition
with suitable coupling agents (as taught by Jackson) prior to the
curing or crosslinking of the host resin, so as to obtain a
uniformly dispersed first class of filler, then the second class of
filler aggregated to obtain its desired secondary structure, and
followed by curing or crosslinking the thermosetting host resin
(e.g., epoxy) to obtain a host resin network.

(Ans. 6).
This statement refers to a sequence of steps that is asserted to be
“apparent” to the person of ordinary skill, and it does not specifically use the
word “obvious.” Nonetheless, it appears to be a conclusory statement about
the means by which the person of ordinary skill would have arrived at the
presently claimed invention by following the combined disclosures of
Chopra and Jackson. Accordingly, we consider the Examiner’s position to
Appeal 2011-013565
Application 11/529,181

7
be that it would have been obvious to perform this particular sequence of
steps based upon the combined disclosures of Chopra and Jackson.
ARGUMENTS
Appellants firstly argue that the Examiner has employed hindsight
analysis by using the inventors’ own teachings to reject the present claims
(App. Br. 5).4 Appellants argue that, even considering the ordinary level of
skill, Chopra and Jackson would not reasonably have led the person of
ordinary skill in the art to select a first class of fillers that is evenly dispersed
and essentially completely co-reacted with the host resin matrix, and a
second class of fillers that is unevenly dispersed and which aggregates into
secondary structures (see id.).
Appellants secondly argue that there is no basis in the prior art
references for the Examiner’s conclusion regarding the order of steps that
the person of ordinary skill would take in light of Chopra and Jackson
(Rep. Br. second full para. on p. 2). Appellants argue that there is no
disclosure in Chopra or Jackson that would lead the skilled artisan to use
coupling agents in a way that couples only some of the nanotubes in Chopra
while leaving other nanotubes to aggregate into secondary structures
(App. Br. second full para. on p. 7). Appellants similarly argue that there is
no teaching or suggestion in Jackson that would reasonably lead the skilled

4 We note that Appellants additionally point to a portion of the Office action
mailed on Jan. 10, 2011; however, the cited portion of this action does not
appear in the Examiner’s answer to the appeal brief or in the final action
mailed on Jun. 2, 2011 which precedes the present appeal. Therefore, we do
not consider this to be part of the Examiner’s present rationale for rejecting
the claims.
Appeal 2011-013565
Application 11/529,181

8
artisan to incorporate coupling agents to a portion of the nanotubes in
Chopra, but not to another portion (App. Br. third full para. on p. 7).
Appellants’ first argument appears to emphasize two aspects of the
invention in particular: firstly, the need to have two classes of filler which
differ in the degree of dispersion in the host resin network; and secondly, the
need for the first class of fillers to be essentially completely co-reacted with
the host resin network and the need for the second class to form aggregates.
With regard to this argument, the Examiner argues that Chopra
discloses that “different kinds” of nanostructures may be incorporated into
the nano-composites (Chopra ¶ [0052], Ans. 8). The Examiner argues that
these “different kinds” of nanostructures correspond to the presently recited
first and second classes of fillers.
While we understand the Examiner’s position that Chopra discloses
that one or more different kinds of nanostructures may be used in the nano-
composite materials, we note in particular that the Examiner’s position does
not conclude that Chopra discloses the use of two fillers which differ by
their degree of dispersion or their surface functionalization. The bare
description in Chopra of “different kinds” of fillers does not amount to a
disclosure that two different kinds of nanostructures may be used
simultaneously in the nano-composite materials, one of which is surface-
functionalized (as presently recited for the first class of fillers), and another
of which forms aggregates (as presently recited for the second class of
fillers). Ultimately, the Examiner’s reliance upon Chopra’s mere disclosure
of “different kinds” of nanostructures is not sufficient to establish that
Appeal 2011-013565
Application 11/529,181

9
Chopra describes or would have suggested such a mixture of the two
different classes of fillers that is required by the present claims.
The Examiner interprets Appellants’ second argument (Ans. 10) as
though Appellants believe that the rejection is premised upon there being no
coupling agent applied to the nanotubes which are aggregated into secondary
structures (corresponding to the present second class of filler). The Examiner
argues that the rejection does not, in fact, propose using coupling agents for
only some kinds of nanotubes but not for others. The Examiner argues that
Appellants’ assertions amount to a misinterpretation of the rejection
(see id.).
While the Examiner contends that Appellants have misinterpreted the
rejection, the Examiner does not provide any further clarification of the
rejection or any further or alternative interpretation of the rationale for
combining Chopra and Jackson. The Examiner does not explain why or how
the person of ordinary skill could have arrived at the presently claimed
invention by combining Chopra and Jackson in any manner other than that
laid out in Appellants’ argument (i.e. by incorporating a coupling agent that
would react with a portion of the filler of Chopra but not with another
portion). Rather, the Examiner repeats the conclusory statement that appears
in the rejection regarding a particular order of steps that would have been
“apparent” to the person of ordinary skill (see id.).
It appears to us that the order of steps which the Examiner relies upon
does, in fact, amount to using a coupling agent that would react with a
portion of the filler of Chopra but not with another portion. The Examiner’s
position regarding the incorporation of a “workable amount” of a coupling
Appeal 2011-013565
Application 11/529,181

10
agent into the compositions of Chopra only appears to arrive at the claimed
invention so long as the coupling agent only reacts with one portion of the
filler of Chopra but not with another portion. We therefore do not find any
misinterpretation of the rejection on Appellants’ part.
Upon review of Chopra and Jackson, we find no evidence in the
references to Chopra and Jackson that supports the sequence of operations
which the Examiner concludes is “apparent” (Ans. 6, 10). Upon review of
the Examiner’s rejections and arguments, we find no articulated reasoning as
to how this particular sequence of steps would be arrived at by combining
only the disclosures of Chopra and Jackson. In particular, we find nothing in
Chopra, Jackson, or the Examiner’s position that provides a disclosure or
suggestion of the sequence of operations of firstly incorporating a coupling
agent into the composition of Chopra to achieve a first class of filler, then
aggregating another portion of a filler to achieve a second class of filler, then
curing the resin.
More generally, we find no articulated reasoning in the Examiner’s
rejection or arguments as to why the person of ordinary skill in the art would
have been motivated by the disclosures of Chopra and/or Jackson to
incorporate a coupling agent into the composition of Chopra in such a way
that only a portion of the nanostructures of Chopra becomes surface-
functionalized and co-reacted with and evenly dispersed in the host resin
network, thereby leaving another portion of the nanostructures which may
become aggregated.
The Supreme Court, quoting In re Kahn, 441 F.3d 977, 988, (Fed. Cir.
2006), stated that “[R]ejections on obviousness cannot be sustained by mere
Appeal 2011-013565
Application 11/529,181

11
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
In the present case, we do not find any articulated reasoning in the
Examiner’s rejection or arguments based upon the disclosures of Chopra and
Jackson that supports the sequence of operations which form the basis for
the combination of the references in a manner that arrives at the presently
claimed invention.
For the above reasons we reverse the rejections.
DECISION/ORDER
The rejection of claims 18-20, 24 and 27 under 35 U.S.C. § 103(a) as
being unpatentable over Chopra in view of Jackson and the rejection of
claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Anton
in view of Chopra and Jackson are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

kmm